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

By Senior Associate Michael C. Jones

UPDATE: On July 2, 2019, the U.S. Patent and Trademark Office (USPTO) issued the final rule indicating that the proposed rule discussed below would go into effect on August 3, 2019. Beginning on this date, foreign applicants and registrants will be required to identify a U.S. licensed attorney prior to examination of a trademark application.

These rules will apply to any foreign domiciled trademark applicant registry the party. Additionally the rules indicate that Canadian trademark applicants will not be able to rely on Canadian patent agents, who were previously authorized to represent their clients before matters with the USPTO. Canadian trademark attorneys and agents will still be allowed to be appointed as an additionally appointed practitioner, but the USPTO will only correspond with the appointed U.S. licensed attorney.

The U.S. licensed attorney will be required to provide their correspondence information including name, postal address, and email address as well as a statement attesting to their active membership in good standing of a bar of the highest court of a state Commonwealth or territory and specific information concerning their bar membership (e.g. state, bar number if applicable and year of admission). Affected applicants who file a trademark application without identifying or designating a U.S. attorney for correspondence and representation, will receive an office action requiring the naming of a qualified U.S. attorney in setting forth a six month period to respond to the office action. Failure to comply with this requirement will result in abandonment of the application.

These rules will apply to any foreign domiciled applicant filing a U.S. trademark application under filing basis section 1 and/or section 44 and will also apply to applications based on section 66a (e.g. Madrid applications) unless all formalities and statutory requirements were already satisfied and the application was in condition for publication upon first action when initially filed with the International Bureau (IB) of the World Intellectual Property Organization (WIPO) during the international phase.

 

ORIGINAL ARTICLE FROM FEBRUARY 19, 2019:

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.