USPTO Proposes US Attorney Requirements for Foreign Trademark Applicants

American flagsThe USPTO recently proposed changes which would force foreign trade mark applicants to engage a US-based attorney, in a bid to limit inaccurate and fraudulent applications by self-filers.

The proposed changes, published by way of a Notice of Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who would otherwise be allowed to file trade marks directly with the USPTO without engaging a licensed US attorney. 

The NPR Summary reads:

The United States Patent and Trademark Office (USPTO or Office) proposes to amend the Rules of Practice in Trademark Cases and the rules regarding Representation of Others Before the United States Patent and Trademark Office to require applicants, registrants, or parties to a proceeding whose domicile or principal place of business is not located within the United States (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to be represented by an attorney who is an active member in good standing of the bar of the highest court of a state in the U.S. (including the District of Columbia and any Commonwealth or territory of the U.S.). A requirement that such foreign applicants, registrants, or parties be represented by a qualified U.S. attorney will instill greater confidence in the public that U.S. registrations that issue to foreign applicants are not subject to invalidation for reasons such as improper signatures and use claims and enable the USPTO to more effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters.

At Michael Buck IP, we already work closely with a number of licensed US attorneys who will continue to assist with expanding protection of our client’s trade marks into the United States.  No changes to these arrangements will be necessary and we remain available to facilitate US trade mark applications on behalf of our local clients.

United States designations filed by way of the Madrid protocol will fall within the proposed new requirements.  However, it is anticipated that the USPTO will review procedures for designations which proceed through to acceptance at the first instance so that a US Attorney need not be appointed in this instance.  Office Actions will need to be responded to by qualified US Attorneys.  This change will affect self-filers into the United States – our current practice of engaging a US Attorney to respond to Office Actions on behalf of our local clients will not change.

The USPTO is accepting comments from the public in relation to the NPR until 18 March 2019. 

If you have any concerns about the proposed changes or would like our assistance with securing trade mark protection it the United States, please contact one of our Attorneys.

Kellie Jukkola

Kellie Jukkola, Associate

Geraldine Rimmer

Geraldine Rimmer, Senior Associate



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