As of August 3rd, 2019, the USPTO will now require foreign trademark registrants to hire a U.S. trademark attorney to file their applications. Though it is highly recommended, United States citizens, permanent residents, and those filing through the Madrid Protocol are not required to work with a trademark attorney at this time.
As you prepare to register your trademark with the United States Patent and Trademark Office, you may have many questions, and you likely also have budget in mind. While you know that a U.S. trademark attorney would help to streamline the time-consuming registration process, are you required to have legal representation? Consider the following to learn more about when a trademark attorney is required, and when it is recommended.
When a United States Trademark Attorney is Required
The United States Patent and Trademark Office, or USPTO, just implemented one of its biggest policy changes in recent years. As of August 3rd, 2019, the USPTO now requires foreign applicants to be represented by a U.S. attorney. This rule applies to all trademark applications, Office Action responses, and renewals. With this new policy change, the USPTO hopes to increase the integrity and accuracy of the United States Trademark Registry, while preserving the value of trademark ownership in the U.S.
The USPTO considers the applicant ‘foreign’ if the business or individual has a permanent legal residence or a principal place of business outside the U.S. While foreign applicants will still be able to file their initial application on their own, they will not be able to respond to any Office Actions issued by the USPTO until they are represented by a U.S. attorney. At this time, anyone filing a basic trademark registration through the Madrid Protocol may be exempt from the policy.