News & Events

articles

USPTO Proposes Requirement of U.S.-Licensed Attorney for Foreign Trademark Applicants and Registrants

By Senior Associate Michael C. Jones

The U.S. Patent and Trademark Office (USPTO) is proposing to impose new obligations on many trademark applicants and registrants. In a notice of proposed rulemaking (NPRM) issued February 15, 2019, the agency said it is looking to require that any trademark applicant or registrant whose domicile or principal place of business is not located within the United States (U.S.) or its territories be represented by an attorney who is an active member in good standing of a state bar in the U.S. (including the District of Columbia and any Commonwealth or territory of the U.S.). 

The USPTO anticipates imposing this requirement, it said, due to an increase in foreign applicants “filing inaccurate and possibly fraudulent submissions that violate the Trademark Act (Act) and/or the USPTO’s rules.” The agency is especially concerned with foreign applicants filing applications claiming use of a mark in commerce, and supporting the use claim with mocked-up or digitally altered specimens indicative of the mark not actually being used in commerce. The USPTO believes that these filings are being done on the advice, or with the assistance, of foreign individuals and entities not authorized to represent trademark applicants before the USPTO.

The newly proposed rules would require that a foreign applicant with a domicile or principal place of business outside the U.S. name a US attorney of record at the time of filing for purposes of prosecution. If this is not done, the USPTO would issue an office action (OA) requiring that a U.S.-licensed attorney be appointed.  The OA may be limited to naming a U.S. attorney requirement or may fully address the application by raising all issues (e.g., clarity issues, likelihood of confusion issues, etc.) with the application.  The USPTO may waive the requirement of a U.S. attorney for applications based on Madrid Protocol International Applications that satisfy all formalities and statutory requirements at time of filing.
The new rule, according to the NPRM, is intended to mirror existing requirements in jurisdictions such as Brazil, Chile, the People’s Republic of China, Israel, Japan, Jordan, Republic of Korea, Morocco, South Africa, as well as the European Union’s Intellectual Property Office.

The USPTO is taking comments from the public on this proposed rule until March 18, 2019. A final rule will likely be announced a few months after the comment period closes and implemented shortly thereafter. 

If the agency implements a final rule similar to what is being proposed, foreign applicants would be wise to identify U.S. counsel at the time of filing or shortly thereafter to ensure efficient trademark application processing.

 

Michael C. Jones is a Senior Associate in Procopio’s Silicon Valley office and is a member of the firm’s Intellectual Property team. He prepares and prosecutes patent applications relating to semi-conductor, electrical and mechanical arts in the areas of display devices, medical imaging, image processing, tire technology and sports equipment. Additionally, Mike provides trademark consultation, and prosecutes trademark applications and post registration filings on behalf of both U.S. clients and clients domiciled overseas. Mike’s practice focuses on network and database management software, network infrastructure, multimedia distribution systems, memory storage devices, data encryption and decryption, mobile communications and semi-conductor devices and microelectromechanical sensors. He is also experienced in in the fields of image processing, video archiving, medical diagnostic equipment, industrial processing equipment and hard disk drives.