Since August 3, 2019, all foreign-domiciled U.S. trademark applicants, registrants and parties to proceedings before the United States Patent and Trademark Office’s (USPTO) Trademark Trial and Appeal Board must be represented by an attorney licensed to practice law in the U.S. (as defined in 37 C.F.R. § 11.1). Such U.S. licensed attorneys are required to both affirm that they are members in good standing with the Bar of a state, and provide bar membership information. This new rule also applies to Canadian patent agents who previously represented parties with matters before the USPTO, as well as Canadian trademark attorneys and agents. Canadian patent agents who are reciprocally recognized by the USPTO’s Office of Enrollment and Discipline (OED) may be appointed as additional practitioners in connection with an application or USPTO proceeding, but must be accompanied by a U.S.-licensed attorney who has separately been appointed to the matter.
The required affiliation with a U.S. licensed attorney applies as to any person whose “domicile” is not located within the U.S. or its territories. Domicile is defined as the “principal place of business” for entities, and the permanent legal residence for individuals. Consequently, foreign-domiciled applicants will need a U.S.-licensed attorney to file an application in the Trademark Electronic Application System (TEAS) as well as any application-related and registration-related submissions. U.S. citizens can continue to file for marks without the use of an attorney.
The USPTO has explained that the new rule seeks to improve the integrity of the trademark register, curtail the unauthorized practice of law, and heighten compliance with U.S. trademark law. Specifically, the new rule is expected to help curtail the submission of non-authentic or digitally altered specimens because of the statutorily proscribed averments that accompany submission of all documents submitted in support of registration via an attorney signature affirming the veracity and authenticity of the submissions.
The new rule follows the USPTO’s conclusion that current mechanisms and sanctions are inadequate to address the altered specimen issue. Sanctions for violating the new rule could include striking filings, terminating proceedings, and referring the violating attorney to OED for appropriate action. The final iteration of the new rule can be found here.