Non-U.S. Companies Now Need U.S. Attorneys for Trademark Filings

In a significant policy shift, the United States Patent and Trademark Office (USPTO) now requires foreign companies and individuals to hire U.S.-based attorneys for most trademark filings.

This requirement, which was proposed by the USPTO in November 2018 and came into effect on August 3, 2019, mandates that any foreign applicant, registrant, or party to a trademark proceeding, who is domiciled outside the U.S., must be represented by a licensed U.S. attorney.

This attorney must be licensed to practice law within the U.S. and be in good standing with the bar, though they do not need to be living in the United States.

The new rule applies to following interactions with the USPTO:

• New Trademark Applications
• Office Action Responses
• Assignments
• Section 7 Filings
• Renewals
• Trademark Trial and Appeal Board matters

Important note: Under the new requirement, foreign applicants can still file initial applications and receive a serial number and priority date.

However, to respond to any Office Actions, the applicant must appoint U.S. counsel to manage and prosecute their trademark application. Failure to do so will result in the abandonment of the application.

Who does the USPTO consider to be a “foreign” company or individual?

Any company or individual “domiciled” outside of the United States or with their “principal place of business” outside of the United States will be considered a “foreign” company or individual.

According to the USPTO, the term “domicile” means the permanent legal place of residence of a natural person or the principal place of business of a juristic entity. The term “principal place of business” means the location of a juristic entity’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities and is usually the center from where other locations are controlled.

Are there any exceptions to the new rule?

While the new rule applies broadly, there are a few exceptions.

1. Foreign citizens who are legally domiciled in the U.S. and foreign companies with U.S.-based headquarters may continue to file applications without a U.S. attorney. However, they must provide proof of their U.S. domicile or business presence.
2. Foreign applicants filing under the Madrid Protocol (or Section 66 applications) may be allowed to proceed without U.S. legal representation. This narrow exemption is available only if the application requires no procedural or substantive Office Action responses.

In other words, if the Madrid Protocol application would otherwise be accepted with no changes to the identification, address, disclaimers, or any other formality or substantive issue, it will be allowed to proceed.

It is important to note that the exemption is available only because the Madrid Protocol system does not permit the appointment of a U.S. attorney during the application process. Once the system is updated to allow this, the exemption will likely be withdrawn.

Why did the USPTO implement this rule?

The USPTO has outlined several goals behind the implementation of this policy.

Goal 1: Improving the accuracy of trademark submissions
Foreign applicants often face challenges navigating U.S. trademark law without local legal expertise, which can lead to inaccuracies in filings and higher rejection rates.

Goal 2: Increasing compliance with U.S. trademark law
The requirement for U.S. representation ensures that applicants are adhering to U.S. legal standards, reducing the number of rejected or flawed applications.

Goal 3: Preserving the integrity of the U.S. trademark register
The rise in fraudulent filings from international applicants, particularly from China due to government subsidy programs, has raised concerns about the dilution of trademark integrity in the U.S.

Foreign registrants without U.S. legal representation often submit applications that are incomplete or inaccurate, causing delays and complicating the registration process. This new rule streamlines the process by ensuring that all filings meet the necessary legal requirements.

What considerations should be made when hiring a U.S. trademark attorney?

Hiring a qualified U.S. trademark attorney helps protect foreign applicants from making costly mistakes. During your search for U.S. counsel, be mindful that there are many unscrupulous filing services and inexperienced attorneys that hawk trademark services online.

Experienced trademark attorneys have the ability to assess a company’s broader intellectual property needs and provide individualized and specialized advice for your business and your industry that extend beyond just a single trademark registration.

When hiring a U.S. trademark attorney, ask them the following questions to ascertain if they are the appropriate attorney for your needs.

• How long have you been practicing trademark law in the United States?
• How many trademark registrations have you obtained for your clients?
• Have you previously registered trademarks in the [blank] industry?

As you search for the right U.S. trademark attorney to support your foreign business, be sure to gather all the essential information for your trademark registration. This preparation will ensure you’re ready to start the registration process as soon as you’ve engaged your trademark attorney.

Final thoughts

The USPTO’s new requirement for foreign applicants to hire U.S.-based attorneys ensures that trademark applications submitted to the USPTO meet U.S. legal standards. The rule is also designed to help preserve the integrity of the U.S. trademark register, preventing foreign individuals and businesses from filing trademarks that are improper and clog up the U.S. trademark system.

Ultimately this rule change benefits both the applicants and the U.S. trademark system by reducing fraud and improving the quality of trademark applications.

Foreign businesses and individuals seeking to protect their brands in the U.S. should work with experienced U.S. trademark attorneys to avoid delays, ensure compliance with the new rule, and ultimately, secure strong, enforceable trademarks.

Contact an experienced U.S.-based trademark attorney today to begin your United States trademark registration.

Frequently Asked Questions

Here are some of the most frequently asked questions we receive about the new USPTO rule. These answers can help clarify whether you need to hire a U.S.-based attorney and what to expect if you’re filing from outside the United States.

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

No, 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 experienced 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?

No, 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 brand.

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Josh Gerben, Esq.

Josh Gerben, Esq. is a nationally recognized trademark attorney and the founder of Gerben IP. Since launching the firm in 2008, he has overseen the registration of over 10,000 trademarks and handled over 1,500 trademark disputes. Josh's practice focuses on building and defending global trademark portfolios for clients. These clients include entrepreneurs, private equity-backed businesses, athletes, celebrities, and public companies. Frequently quoted by major media outlets like CNBC, CNN, The New York Times, and The Wall Street Journal, Josh is widely regarded as a leading authority in trademark law.