USPTO to Require U.S. Counsel for Foreign-Domiciled Trademark Owners Effective August 3, 2019

July 19, 2019

Foreign Applicants and Registrants should take steps now to ensure deadlines are satisfied in compliance with the new rule.

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On July 2, 2019, the PTO announced it will implement a rule requiring U.S. counsel for foreign-domiciled trademark applicants and registrants. The new rule is effective August 3, 2019, and applies to all trademark owners with a foreign address. We discussed the rule in our February Alert.

For any new filings after the effective date, licensed U.S. counsel must be designated. This rule applies to all outstanding Responses to Office Actions, post-registration filings such as Declarations of Use and Applications for Renewal, and proceedings at the Trademark Trial and Appeal Board. Foreign trademark owners should make arrangements to ensure that no issues are encountered when responding to deadlines arising after the effective date. It is expected that the Trademark Electronic Application System (TEAS) will require state bar licensing information to submit filings and that defective submissions will be rejected.

The PTO announced “[i]f someone other than a U.S.-licensed attorney filed your application or application-related or registration-related submission with the USPTO before the effective date of this new rule, and the submission is otherwise acceptable, then the submission will be accepted. But if the USPTO issued an office action before the effective date of this rule, you will need to appoint an attorney if you respond after the effective date of this rule.”

The rule does not apply to the initial Request for Extension of Protection under the Madrid Protocol but will apply to all subsequent papers. Office Actions will issue for such filings which will require designation of U.S. counsel and it is expected a short deadline will be imposed.

There is one noticeable change from the Notice of Proposed Rulemaking: previously-recognized Canadian attorneys and agents can still represent Canadian clients as additionally appointed representatives; however, the PTO will only correspond with U.S. counsel.

The Rule is an attempt by the PTO to address what Director Iancu called a “rise in behaviors that undermine the accuracy and reliability of the trademark register.” As the Director explained in recent testimony before the U.S. House Subcommittee on Courts, Intellectual Property, and the Internet Committee on the Judiciary, the “USPTO has faced a surge of foreign applications during the last few years, particularly from China, in some cases with inaccurate or possibly fraudulent claims of use of the mark for the goods or services specified in the application. Many of these applicants appear to be filing these questionable applications on the advice or with the assistance of foreign individuals and entities who are not authorized to practice law in the U.S. and therefore should not be representing trademark applicants before the USPTO.” As explained in our February Alert, it is hoped this will: 1) “instill greater confidence in the public that U.S. registrations that issue to foreign applicants are not subject to invalidation for reasons such as improper signatures and use claims,” and 2) “enable the USPTO to more effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters.”

The Rule is a part of ongoing changes at the PTO to address issues with improper claims of use. Dykema’s trademark attorneys are actively involved in policy changes and the new PTO rules and can assist you with ensuring proper claims of use and specimens are collected to minimize issues at the PTO. Please contact Dykema trademark attorneys if you would like information on the new rule or any information about use in commerce and proper specimens.

For more information, please contact Jennifer Fraser, Eric T. Fingerhut, Marsha G. Gentner, or your Dykema relationship attorney.

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