As of 3rd August 2019, a new United States Patent and Trademark Office (USTPO) rule has come into effect requiring the registration of trademarks by foreign domiciled trademark applicants to be represented by US licensed attorneys.
For the purpose of trademark registration, a foreign domiciled applicant is either an individual with a permanent legal residence outside of the United States or entities with its principal place of business, for example its headquarters, outside of the United States. This being said, foreign domiciled individuals or entities will need a US licensed attorney to make any submissions to the USTPO in connection with any trademark application, including submissions made through the Trademark Electronic Application System (TEAS), as well as submissions made using the Trademark Trial and Appeal Board's Electronic System for Trademark Trial and Appeals (ESTTA).
With the increase of foreign trademark applicants, applications have been more susceptible to inaccurate filings and in some cases fraudulent submissions that are noncompliant with US trademark law and the USPTO's rules. These errors occur even when applicants are being represented by lawyers from their local jurisdiction, not just those acting on their own behalf.
The purpose of this new rule is to maintain the accuracy and integrity of the register, for the benefit of the user, by having a competent and licensed US attorneys handle trademark application submissions and any trial or appeal proceedings related to one's trademark.
If someone other than a US licensed attorney filed your application, application-related, or registration-related submission with the USPTO before the effective date of this rule, August 3rd 2019, 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. Similarly, regarding IP trials and appeals, for foreign-domiciled parties who are not represented by a US licensed attorney, the Trademark Trial and Appeals Board (TTAB) will suspend the proceeding and issue an order requiring you to have a US licensed attorney represent you in the proceeding.
Anderson & Anderson has a team of US attorneys with decades of experience handling IP matters including the registration of trademarks and enforcement of trademark protection. Throughout the years, Anderson & Anderson has represented prominent clients from Asia and other foreign jurisdictions in defending their IP rights.
If you are a foreign domiciled entity or individual and want more information as to how we can assist you in registering or protecting your trademark, email us at Anderson@anallp.com to schedule a free consultation with one of our experts.
(Photo credit: www.studentnewsdaily.com)