Changes for foreign trademark applicants filing into the USA

From 3 August 2019, foreign trademark applicants and registrants must use a US-licensed attorney to file all trademark-related submissions with the United States Patent and Trademarks Office (USPTO).

The USPTO has made the changes in an attempt to increase compliance with USPTO regulations and US trademark law by improving the accuracy of submissions to the USPTO.  It is hoped that these changes will improve the integrity of the US trade marks Register.

The USPTO notes:

Businesses rely on the U.S. trademark register to make important legal decisions about their brands. In order to maintain the accuracy and integrity of the register, for the benefit of all its users, the USPTO must have the appropriate tools to enforce compliance by all applicants and registrants. We discovered an increasing number of foreign trademark applicants, registrants, and parties are filing inaccurate and possibly fraudulent submissions with the USPTO that do not comply with U.S. trademark law or the USPTO’s rules. Often, these submissions are made with the assistance of foreign individuals or entities not authorized to represent applicants at the USPTO.

Many countries already require local attorneys to represent applicants. A significant number of trademark offices around the world require foreign-domiciled applicants and registrants to obtain local counsel as a condition for filing papers with those trademark offices.

Relevantly, Madrid Protocol applications which designate the US will have the requirement for a US-licensed attorney waived where all other formalities and substantive requirements are met.  This is because there is currently no option to designate local attorneys when filing a Madrid Protocol application.  If changes are made to Madrid Protocol applications to allow for the appointment of attorneys for each designation, it’s likely USPTO will withdraw this exemption.

Michael Buck IP has a strong network of trusted US Attorneys who we already work with on national applications into the United States and where Madrid designations attract substantive or formalities objections. 

If you are interested in seeking US trade mark protection either by way of a national US filing or as part of a Madrid Protocol application, please contact Kellie or Geraldine or email [email protected] and we would be pleased to assist.

American flag on building
Photo by Nik Shuliahin on Unsplash


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