New USPTO Rules for the Foreigner Representation in Trademark Matters

New USPTO Rules for the Foreigner Representation in Trademark Matters

The United States Patent and Trademark Office has announced a new rule in force by August 3rd, 2019, requiring all foreign-domiciled trademark applicants, registrants, and parties at the Trademark Trial and Appeal Board whose permanent legal residence or principal place of business is outside the United States or its territories, to be represented by an attorney who is licensed to practice law in the United States, in order to address the USPTO. The Office believes that such a rule will contribute to discourage fraudulent submissions and improve their overall quality.

These amendments reduce the previous options that foreigners had in order to register a trademark in the United States. Prior to this rule, foreigners were able to submit trademark applications by themselves. However, it is the USPTO opinion that some of these autonomous applicants were misguided or ill-advised by non-U.S attorneys, whether qualified professionals at other countries or not, or in any way utilizing the assistance of unqualified advisers who were unable to represent their clients at the USPTO on the first place. Therefore, to avoid such abuse of the self-standing application process, it has been made mandatory to proceed at the USPTO through the representation of a qualified U.S attorney. This restriction aspires to benefit both the public and the applicants, by guaranteeing the integrity of the USPTO register and the application of disciplinary rules over U.S qualified attorneys; unlike foreign lawyers, who are beyond such jurisdiction.

The measure is aligned with similar requirements already in force in Brazil, Chile, the People’s Republic of China, Israel, Japan, Jordan, Republic of Korea, Morocco, South Africa, and the European Union.

Regarding applicants extending their international registrations to the United States under the Madrid Protocol, it is important to remark that, for the time being, applicants would be only asked to proceed with a U.S attorney if the USPTO issues a provisional refusal or office action. Also, after August 3rd 2019, Canadian patent agents will no longer be authorized to represent Canadian trademark applicants, registrants, or parties before the USPTO in trademark matters; although some Canadian trademark attorneys and agents reciprocally recognized by the USPTO Office of Enrollment and Discipline will be able to continue representing their clients as additional practitioners, but such applicants will also need to appoint a U.S attorney to file formal responses.

At Lerman & Szlak, our team of U.S. qualified attorneys remains available to assist foreign applicants in their USPTO applications. For more information, please contact Celia Lerman, Partner, at [email protected]

Celia Lerman

About Celia Lerman

Celia Lerman is a lawyer in both California (California Bar & Master in the Science of Law, Stanford University) and Argentina (Universidad Torcuato Di Tella, valedictorian; LLM, Intellectual Property, from Universidad Austral, with honors). She is a partner at Lerman & Szlak, managing their intellectual property practices in Argentina & California. You can contact her here.

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