Foreign Trademark Registrants are Now Required to Hire a U.S. Attorney

By Josh Gerben, Esq.

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 3^rd, 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.

The Benefits of Working with a U.S. Trademark Attorney

While it is not a requirement for U.S. citizens to hire an attorney when registering a trademark, the USPTO highly recommends working with an attorney to prepare and file your application.  This is because of the vast number of legal decisions that need to be made throughout the process.  From selecting the correct classes of goods and services to responding to Office Actions from the USPTO, working with an experienced trademark attorney allows you to continue your focus of growing your business while knowing your trademark is in good hands.  Not only will a trademark attorney facilitate an easier registration process, but they may also increase your chances of approval.  A recent study by the University of North Carolina found that working with a trademark attorney can increase your likelihood of approval by up to fifty percent!

In addition to trademark registration, most trademark attorneys also offer a wide range of additional services.  Among the most valuable are trademark monitoring and enforcement.  Once the USPTO grants trademark approval, you will be responsible to monitor its use in the marketplace.  This can be a challenging and time-consuming task, especially while you are trying to build your business.  Your trademark attorney can monitor the use of your mark and alert you to possible infringement.  Then, you can work with your attorney to determine the best course of legal action to take.  Often, a cease-and-desist letter drafted by the attorney is all that is needed to put an infringer on notice, but occasionally, more formal legal action will need to be taken.

The Disadvantages of a DIY Approach

Business owners and entrepreneurs often have budget on the mind when creating a product or growing a business.  It’s understandable that many may opt to cut costs along the way, and you may be tempted to use a legal site to conduct a search and register your mark.  While the do-it-yourself approach may benefit you when designing a logo or creating a website, it’s not recommended for trademark registration.  For instance, trademark searches conducted online tend to only reveal exact matches.  Unfortunately, most trademark disputes arise, not from exact matches, but from similar matches, which may cause confusion in the marketplace.  Failing to conduct a comprehensive search before filing with the USPTO could cost both time and money if you must refile because your mark has been registered by someone else.

In addition to insufficient trademark searches, many trademark applications are rejected because of incorrect class choices.  The USPTO has a list of 45 different international classes of goods and services, and it can be challenging to navigate which class best represents the product or service you plan to offer.  If you choose the wrong class, your trademark application may be rejected, or, worse, your registration may be granted, but you may not be protected for the goods or services you plan to offer.  To ensure you choose the right international classes, it is best to work with an experienced trademark attorney.

Work with an Experienced United States Trademark Attorney

If you are a foreign individual or business that wishes to register a trademark within the United States, new USPTO policy requires you to be represented by a U.S. attorney.  While U.S. citizens and those with permanent residence within the country are not required to work with an attorney, it is highly encouraged.  The process to file a trademark registration, from conducting a trademark search to preparing a submitting the application, is extremely detailed, and may best be handled by an experienced trademark attorney.  Contact Gerben IP to begin the process to register your U.S. trademark today.

• SHARE THIS ARTICLE ON:

Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.