Latimer LeVay Fyock, LLCLatimer LeVay Fyock, LLC

U.S. Licensed Attorneys Will Soon Be Required at the USPTO For Foreign Trademark Applicants, Registrants and Litigants

John L. Ambrogi

On August 3, 2019, a new United States Patent & Trademark Office (USPTO) rule takes effect requiring foreign-domiciled trademark applicants, registrants and Trademark Trial & Appeal Board (TTAB) litigants to be represented at the USPTO by a U.S.-licensed attorney. This new rule even concerns Canadian trademark filers.

U.S.-licensed attorneys representing foreign-domiciled trademark filers or TTAB litigants will need to provide:

1) Their name, address and email address;

2) A statement attesting to their active membership in good standing of a bar of the highest court of a U.S. state, commonwealth, or territory; and

3) Information concerning their bar membership (state, number if applicable, and year of admission).

Regarding our friends to the north - Canadian trademark attorneys and agents will also need to retain a U.S. licensed attorney to be their primary contact with the USPTO. Although Canadian trademark attorneys and agents will continue to be recognized as appointed practitioners who can represent their Canadian clients, the USPTO will correspond only with the appointed U.S. licensed attorney. Further, Canadian patent agents will no longer be authorized to represent Canadian trademark applicants, registrants, or parties.

The rationale behind the new rule, as stated by the USPTO is:

The new rule is intended to:

  • Increase USPTO customer compliance with U.S. trademark law and USPTO regulations.
  • Improve the accuracy of trademark submissions to the USPTO.
  • Safeguard the integrity of the U.S. trademark register.

Curious to see how the USPTO directs foreign-domiciled parties to proceed – please see: