All Foreign Trademark Applicants Must Hire U.S. Attorneys

By Eric Perrott, Esq.

In one of the United States Patent and Trademark Office’s biggest policy changes in decades, the USPTO will require foreign applicants to hire U.S. counsel to register their trademarks. There are a few exceptions, so if you are foreign counsel advising your clients, or if you own a business headquartered in another country and are considering applying for trademark registration in the U.S., read carefully:

Made effective on August 3rd, 2019, the USPTO will require foreign applicants, registrants, or parties to a trademark proceeding to be represented by a U.S. attorney.

The new rule applies to all interactions with the USPTO, including:

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

This sweeping change is designed to increase the integrity and accuracy of the U.S. Trademark Registry and preserve the value and strength of owning a trademark registration in the United States.

To avoid delays (or worse, abandonment of a pending application) foreign applicants and registrants should pay close attention to the points below.

Who Does the USPTO Consider to be “Foreign?”

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.

Foreign Applicants May Still File Applications, But Not Respond to the USPTO Examining Attorneys

Foreign applicants will still be permitted to file the initial application and receive both a serial number and a priority date. Like any other application, the application filed by a foreign applicant will be entered into the USPTO system and will be examined by a USPTO trademark examining attorney. However, the applicant will not be permitted to respond to any substantive or procedural office actions – they will be required to hire licensed U.S. counsel before responding.

All Foreign Applicants Must be Represented by a U.S.-licensed Attorney, Even if the Trademark Application is Technically Sound and Otherwise Approvable

Even if the USPTO Examining Attorney has no procedural or substantive issues with the application, the Examining Attorney will not permit an unrepresented foreign applicant’s application to proceed. An Office Action will issue, providing the foreign applicant three months to hire a U.S. attorney and appoint them as the attorney of record. Failure to respond to the Office Action by appointing an attorney within three months will result in abandonment of the application.

If more time is needed to find an attorney and respond to the Office Action, a one-time extension of three months can be submitted to the USPTO with a $125 fee. Extension requests must be made before the initial response deadline has been reached.

Madrid Protocol Applications are Partially Exempt (for now)

Applicants filing under the Madrid Protocol who are domiciled in a foreign country may be allowed to proceed to registration without hiring a United States attorney. This narrow exemption is available only if the application requires no procedural or substantive Office Action responses. In other words, if the 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.

This Rule Applies to Trademark Renewals, Petitions to the Director, TTAB Matters, and Other Filings

While this rule change will impact applicants the most, it is important to note that the new rule applies to all types of filings. Foreign registrants will not be permitted to submit their own renewals, will not be able to file their own assignments, and will not be permitted to represent themselves before the Trademark Trial and Appeal Board. Timing is especially important, as many of these matters are time sensitive and failing to appoint a U.S. attorney with adequate time before deadlines could result in extra costs, significant delays, or even abandonment.

Reciprocity for Foreign Attorneys

The new rule allows attorneys from countries with prior agreements with the U.S. to represent clients from those countries. Currently, the only country to which this applies is Canada, where Canadian trademark attorneys may represent Canadian companies in a narrow capacity, but their clients must appoint a U.S.-licensed attorney as the “attorney of record.” The USPTO will only correspond with the U.S. attorney.

Find a US Trademark Attorney You Can Trust

This new policy will likely open the door for enterprising attorneys with very little knowledge or experience with trademark registrations, and the USPTO response to such individuals will be harsh. Ultra-low-cost filings are often riddled with errors, as the filers rarely are spending the time and attention necessary for success. By hiring an experienced US trademark attorney, you can help avoid further delays and register strong, long-lasting trademarks with the United States Patent and Trademark Office.

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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.