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New USPTO Proposal Requires Foreign Trademark Applicants to Hire U.S. Based Attorneys

The number of international trademark filings in the United States has increased significantly over the last several years. In the past, foreign registrants were able to apply for a U.S. trademark without U.S. legal representation, but that may soon change. The USPTO has issued a new proposal, effective in July, that will require foreign trademark applicants to hire U.S. based attorneys. Here’s what the new proposal states, the reasons behind it, and what this may mean for trademark registrants.

The New Proposal

The United States Patent and Trademark Office, or USPTO, has issued a proposal requiring foreign trademark applicants to hire a U.S. based attorney to prepare their registration. According to the USPTO, the requirement will apply to “trademark applicants, registrants, and parties who have a permanent legal residence or a principal place of business outside the United States.” These applicants must hire a licensed U.S. attorney to represent them at the USPTO.

This proposal was issued in November of 2018, and was followed by a three-month comment period, which ended in February of this year. At this time, the USPTO intends to adopt the new requirement beginning in July of 2019. Any foreign registrants filing a trademark application after that time will need to hire U.S. representation. This new proposal is similar to existing trademark law in many countries and regions, including Canada and the European Union.

Reasons for this Requirement

The USPTO has provided three goals they hope to achieve with these new requirements:

  • To ensure the accuracy of submissions to the USPTO
  • To increase customer compliance with federal trademark law
  • To ensure the integrity of the US trademark register

With the rise in international registrations has come an increased number of fraudulent trademark applications from foreign registrants. One reason for this is the Chinese government’s subsidies program, which financially awards its citizens for successful trademark registrations in the U.S. This program has increased the number of Chinese applicants seeking only to benefit from securing the trademark registration, not actually using it. These trademark applications not only delay the registration process for other applicants, but they also weaken the integrity of the federal trademark.

In addition, foreign registrants working without an attorney may have more legal challenges throughout the application process, often resulting in a higher percentage of rejections.  The new proposal will assist both the trademark registrant and the USPTO with streamlining the application process, ensuring fewer delays along the way.  With the assistance of U.S. legal representation, foreign applicants are more likely to have a smooth registration process, resulting in a higher likelihood of approval from the USPTO.

What This Means for Trademark Registrants

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This proposal, when implemented, will have little effect on any U.S. residents looking to register a trademark.  While it is highly encouraged to work with an experienced trademark attorney no matter where you plan to register, it is not a requirement by the USPTO at this time.  Applicants from outside the U.S., however, will need to hire a U.S. based attorney to file with the USPTO.  The attorney must be licensed to practice law within the U.S., though they need not live in the U.S. at the time, and be in good standing with the bar.  Any foreign registrants that file a trademark application without a U.S. based attorney will be issued an Office Action by the USPTO.  They will then have six months to hire the proper legal representation and respond to the Office Action.  Failing to do so will result in rejection of the trademark application.

At this time, the new proposal will not affect applications filed through the Madrid Protocol.  This international treaty allows trademark registrants to file a single application, which can then be applied to any of its more than 90 member countries.  Applicants filing through the Madrid Protocol may continue to use a foreign attorney throughout the registration process, though working with a local trademark attorney increases the likelihood of approval significantly.

The USPTO hopes to lower the number of fraudulent applications and maintain the integrity of the registration process through this new proposal.  If you reside outside the United States and plan to register your trademark with the USPTO, you will need to hire a U.S. based attorney in good standing with the bar to represent you.  This will benefit not only the USPTO, but you as well, as trademark applications filed by an attorney are more likely to be approved.  Contact an experienced U.S. based trademark attorney today to begin your federal registration.

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