On July 2, 2019, the United States Patent and Trademarks Office (USPTO) introduced a new rule pertaining to the representation of Foreign Applicants and Registrants in Trademark Matters filed in the United States. The rule introduced by the USPTO requires all foreign-domiciled trademark applicants, registrants and parties to Trademark Trial and Appeal Board (TTAB) proceedings to be represented by an attorney who is licensed to practice law in the United States. The new rule takes effect on August 3, 2019.

This means that with effect from August 3, 2019, all non-US applications and registrations and all new foreign applications need to be filed by a US attorney. The said rule applies to all new and current filings in the USPTO. These include the initial filings of trademark applications, which will be refused registration if not filed by a qualified US attorney. If a foreign client is being represented by a U.S. attorney, he /she must file proof of bar certification, registration number, and good standing, in order to prevent fraudulent filings.

Further, if an application is filed or a registration is obtained before the implementation of this new rule, a US Attorney need not be appointed. However, if an Office Action is issued by the USPTO, the reply needs to be filed by an attorney eligible to practice in the United States. Moreover, current foreign trademark registrants will need to designate a United States attorney only when they file a Declaration of Use or a renewal application.

For applications filed under the Madrid Protocol, the same rule will be applied as the WIPO Treaty will also be amended eventually, and a rule for appointment of a US Attorney for applications in the US filed under the treaty will be introduced.

PURPOSE BEHIIND THE NEW RULE

The purpose behind the introduction of this new rule is to improve statutory compliance with the laws and requirements of the USPTO. The Under Secretary of Commerce for Intellectual Property and Director of the USPTO Andrei Iancu stated that “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.”

Further, it was also observed that a big number of foreign applicants are receiving inaccurate information or no information about the legal requirements for trademark registration in the U.S. Therefore, to protect the integrity of the USPTO, this new rule pertaining to representation in the US has been introduced.

The new rule will take effect from August 3, 2019 and an extension from the USPTO is highly unlikely. Therefore, foreign applicants and registrants not already represented by a US Attorney must seek representation from an Attorney qualified to practice law in the United States.