On Aug. 3, a new regulation promulgated by the U.S. Patent and Trademark Office (USPTO) will take effect and require all trademark applicants, registrants and parties to trademark proceedings that are domiciled outside the United States to be represented by an attorney who has a license to practice law in the U.S. Consequently, individuals and entities with a permanent legal address or a principal place of business (i.e., headquarters) located outside the United States or its territories, respectively, will no longer be permitted to file any trademark-related submissions with the USPTO, either without an attorney or through an attorney who is not licensed in good standing in the United States. Moreover, under the new rule, U.S.-licensed attorneys who represent someone in a trademark matter, regardless of where domiciled, will now need to provide their U.S. state bar membership information along with an attestation that they are active members in good standing of the bar.
Goals of the New Rule
- Increase Accuracy of Trademark Submissions and Reliability of Trademark Register
The USPTO decided to make the rule changes with respect to foreign applicants, registrants and other parties in response to increasing numbers of inaccurate and/or fraudulent filings that did not comply with U.S. trademark law or the USPTO regulations. Most significantly, these submissions jeopardize the validity of the U.S. trademark register, which is relied upon by the public to make important legal and business decisions. The USPTO anticipates that the new rule will lead to a more accurate and reliable trademark register that minimizes costs.
- Enhanced Compliance with Trademark Law to Protect Integrity of Trademark Register
In addition, the USPTO found that there were many instances of foreign parties engaging in the unauthorized practice of law by improperly representing foreign applicants and registrants before the USPTO. Thus, the rule changes also equip the USPTO with necessary and appropriate tools to enforce compliance with U.S. trademark law and USPTO regulations. The USPTO’s enforcement capacity is directly related to the essential directive of maintaining the integrity of the U.S. federal trademark register.
International Context and Madrid Protocol Filings
This new USPTO rule is in accord with other countries’ laws. Many other jurisdictions impose similar requirements that foreign-domiciled trademark applicants and registrations utilize local counsel. Notably, at the outset, the USPTO has determined that for international trademark applications that are filed under the Madrid Protocol and seek to extend protection to the United States, the requirement to appoint a U.S.-licensed attorney will be temporarily waived until publication if, and only if, those applications meet the requirements to be published. If a Madrid Protocol application filed by an applicant domiciled outside the United States does not meet U.S. trademark law or USPTO rule requirements, the USPTO will not only refuse registration but also will require the applicant to appoint an attorney authorized to practice before the USPTO.