Non-US Companies (and Citizens) Cannot File Trademarks Without a U.S. Attorney

By Eric Perrott, Esq.

On August 3rd, 2019, the United States Patent and Trademark Office implemented a rule requiring foreign companies and individuals domiciled outside of the United States to use a licensed U.S. attorney to file trademark applications, renewals, and almost any other document before the USPTO. This affects every company and individual outside of the U.S., but it can be particularly unexpected to trademark applicants and owners who might have filed without an attorney in the past.

Here is an overview of the new rule:

• The USPTO requires foreign applicants (whose domicile or principal place of business is not located within the U.S. or its territories) to be represented by licensed U.S. counsel or, in limited cases, an authorized foreign attorney (i.e. registered Canadian agent)
• This rule applies to all filings before the USPTO, including applications, Office Action responses, “proof of commercial use” filings, Priority Actions, Examiner’s Amendments, renewals, assignments, Petitions to the Director, and even simple address changes
• Applicants flagged under this rule will be issued an Office Action requiring the appointment of U.S. counsel within three months of the issuance of the Office Action

Here are the exceptions to the new rule:

• Foreign citizens domiciled in the United States may still file without an attorney, but must be prepared to show proof of being ‘legally domiciled’ in the U.S.
• Foreign companies with U.S. headquarters may still file without an attorney, but, again, must be prepared to prove it.
• The new rule would also apply to Madrid Protocol applications (also known as Section 66 applications.) However, the Madrid Protocol filing system does not currently include a method for appointing counsel through the online forms, so the USPTO will temporarily allow Madrid Protocol applications that otherwise would not require further examination to proceed without a U.S. attorney until the international forms are updated.
• Authorized Canadian agents will still be allowed to prosecute applications for Canadian citizens, but must appoint U.S. counsel as their domestic representative

There are also some questions that you might have – here are a few of the most common questions we receive:

I am an international company with headquarters in Europe and I already registered my trademark. Do I still need to hire a U.S. attorney?

Your trademark registration will remain valid without appointing a U.S. attorney. However, you will be unable to file any maintenance documents, including renewals, address changes, name changes, or assignments of rights without hiring a U.S. attorney. Chances are, an experience U.S. trademark attorney can help counsel you beyond your registration in different ways to strengthen your legal protection.

I am a foreign citizen living outside of the U.S. and I just filed my application by myself. Is my application void or invalid?

If the rule applies to you and you file without a U.S. attorney, you will be given the opportunity to appoint counsel to represent you. This requirement will be issued in an “Office Action,” and you will have three months to appoint a U.S. attorney. If you don’t respond, however, then the application will abandon.

This is a simple form to file out – why are you charging a legal fee?

Trademark registration is much more than just filling out a form. There are dozens of legal decisions that have to be made before the application is even filed, then many more over the course of the application process and the life of the trademark registration. Each of the decisions is important and may change the scope or strength of your protection. An experienced trademark attorney can look at your entire business and take that into account when helping to counsel you on which strategy to use to protect your IP.

Beware of Quasi-Attorney Online Filings Services

As a result of this policy change, many new or inexperienced attorneys are attempting to take advantage of the policy and offer ultra-low-cost filings. Trademark applicants accept these low-cost offers at their own risk – typically this means little to no review of the application, strategy, or other important considerations are taking place and many of the attorneys offering these kinds of services have very little experience in trademark law. When you hire an attorney, you should consider an attorney with the experience and knowledge to provide individualized and specialized advice for your business and your industry. If the attorney you hire is simply filling out a form for you to submit, this likely does not meet the minimal review necessary to ensure your trademark is protected. All services are different, but trademark applicants should be wary of these types of services and should talk to their attorney about his or her experience and level of knowledge in the field of trademarks.

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Eric Perrott, Esq.

Eric Perrott, Esq. is a trademark and copyright attorney committed to providing high-quality legal services for any sized budget. Eric’s ability to counsel clients through any stage of trademark and copyright development and protection allows him to provide his clients with personalized advice and unique analysis. Eric can be reached directly at: eric@gerbenlawfirm.com. The contents of this blog are for informational purposes only and may not be relied on as legal advice.