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.