USPTO Issues Rules Affecting Non-U.S. Trademark Applicants

Friday, July 12, 2019

The U.S. Patent & Trademark Office (“PTO”) issued a final rule, effective on August 3, 2019, requiring that all applicants and registrants who are not domiciled within the United States must be represented by a United States attorney (specifically, “an attorney who is an active member in good standing of the bar of the highest court of a state in the United States”).  Upon receipt of any new trademark application or post-grant filing filed by a foreign applicant/registrant that does not comply with the new rule, the PTO will issue an office action giving the applicant/registrant six months to appoint a U.S. attorney.  Failure to comply will result in abandonment of the application/registration.  

Most foreign-domiciled Madrid Protocol applicants will also be subject to this requirement (with an exception for applications filed with the International Bureau of WIPO with all formalities and statutory requirements already satisfied and in condition for publication upon first action). 

The PTO has advised that for applications pending as of August 3, 2019, appointment of a US attorney will be required in most cases. 

The PTO has stated that the object of the new rule is intended to (1) instill greater confidence in the public that U.S. registrations issued to foreign applicants are not subject to invalidation for reasons such as improper signatures and use claims, and (2) enable the PTO to more effectively use available mechanisms to enforce foreign applicant compliance with trademark requirements.