Foreign Applicants Must Retain U.S. Counsel

3 min

The United States Patent and Trademark Office (USPTO) recently enacted a rule change that will have a significant impact on trademark filers, especially applicants outside the United States. Effective August 3, foreign-domiciled trademark applicants must be represented at the USPTO by an attorney who is licensed to practice law in the United States. This applies to both prosecution matters and adversarial matters before the Trademark Trial and Appeal Board (TTAB).

The new rule was enacted following an increase in foreign applications with inaccurate and possibly fraudulent submissions. The goal of the rule change is to improve the accuracy of trademark submissions to the USPTO and increase compliance with U.S. trademark law and USPTO regulations. The USPTO also justified the rule change by pointing out that many countries already require local attorneys to represent trademark applicants.

As a result of the rule change, foreign applicants are no longer able to represent themselves. Furthermore, foreign lawyers are no longer able to represent their clients before the USPTO unless they are also licensed to practice law in the United States. The USPTO now verifies whether an attorney is licensed to practice law in the United States by requiring information regarding their bar membership and a statement attesting to their active bar membership in good standing.

Because the rule change affects all trademark matters, both applications filed nationally with the USPTO and applications submitted through WIPO as part of a Madrid application are affected. As a result, Madrid filers must now retain U.S. counsel to address any issues that arise before the USPTO, including routine administrative responses, such as providing the applicant's entity status and citizenship.

The rule change will apply to all active trademarks. For applications pending at the time the new rule took effect, the USPTO will require designation of U.S. counsel at the time of the next filing.

Applicants outside of the United States and their attorneys should consider the need to engage U.S. counsel as they plan for deadlines, especially priority filings and office action responses. Additionally, the rule change increases costs for Madrid filers and foreign applicants who otherwise would have filed pro se. These parties should adjust their budgets for U.S. trademark prosecution to account for hiring local counsel.

Finally, applicants should note that the USPTO has not finalized how these changes will be implemented. Since the new rule came into effect, there have already been several changes to TEAS and the language surrounding bar verification. Additionally, trademark examiners have received inconsistent instructions regarding how to obtain the required bar information from attorneys. Similarly, the Electronic System for Trademark Trials and Appeals (ESTTA), the on-line filing system for the TTAB, has not yet been updated to require attorney bar information.