U.S. Attorney Required for All Foreign-Domiciled Trademark Filers
The U.S. Patent and Trademark Office (USPTO) recently announced that, starting on August 3, 2019, all foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board (TTAB) proceedings must be represented by a licensed U.S. attorney.
The new rule applies to all trademark applicants, registrants, and parties whose permanent legal residence (for individuals) or principal place of business (for business entities) is not within the United States or its territories. It applies to ALL prosecution and contested filings after the August 3 effective date, including (1) new application fillings, responses to office actions, and all post-registration maintenance filings at the USPTO, and (2) oppositions, cancellations, and appeals before the TTAB.
For applications under the Madrid Protocol, the USPTO currently takes a lenient approach due to the lack of a mechanism at the International Bureau of the World Intellectual Property Organization by which a U.S. attorney may be designated. Thus, for the time being, the USPTO will waive the U.S. attorney requirement regarding any initial request for extension of protection to the U.S. under the Madrid Protocol. However, it will require representation of a licensed U.S. attorney for all subsequent responses, if any, to the USPTO on that application.
For assistance with such foreign-based U.S. trademark matters, please contact:
Yan “Linda” Yang
Micheline Kelly Johnson
Disclaimer – The information in this law alert is for informational purposes only and does not constitute legal advice. No attorney-client relationship has been or will be formed by any communication(s) to, from or with the law alert or author. The opinions expressed are those of the author, and decisions relating to the content belong to the author.