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August 07, 2019

Foreign Applicants Must Now Appoint U.S. Counsel for USPTO Trademark Proceedings

In a significant shift from long-standing procedures, the U.S. Patent and Trademark Office (USPTO) recently revised its rules to require that all foreign-domiciled trademark applicants, registrants and parties to trademark proceedings be represented by a licensed U.S. attorney. This is a substantial change in procedure, which currently allows foreign-domiciled applicants, registrants and parties to be unrepresented or, in limited situations, to be represented by non-U.S. attorneys in matters before the USPTO. View the new rules here.

The rule change has been under consideration by the USPTO since earlier this year as part of a broader effort to curtail fraudulent and bad faith filings and ensure stricter compliance with USPTO procedures. In its advocacy for the rule change, the USPTO stated that the rules “will have the benefit of generally reducing costs to applicants, registrants, and other parties and [provide] greater value to consumers who rely on registered marks.” The USPTO believes the rule changes will undoubtedly lead to a “cleaner” federal register — one that more accurately reflects the trademarks used in U.S. commerce.

What Do the Changes Mean?

The rule changes mean that all “foreign-domiciled” trademark applicants, registrants and parties are required to appoint U.S. counsel or risk significant consequences. The USPTO considers “foreign-domiciled” applicants, registrants or parties to include any individual with a permanent legal residence outside of the United States or its territories, or any entity with its principal place of business outside the United States or its territories. Practically speaking, the rule change will require any foreign-based filer or party to a trademark proceeding to appoint U.S. counsel at the filing stage for all new applications filed after August 3, 2019. If a filing predates the effective date, a foreign-domiciled applicant will need to appoint U.S. counsel prior to filing a response to an office action. For all foreign-domiciled parties in pending proceedings that are not represented by a U.S. licensed attorney, the Trademark and Appeal Board will suspend the proceeding and issue an order requiring the foreign-domiciled party to appoint U.S. counsel.

Are There Exceptions?

The rules are intentionally broad in application but do carve out the following limited exceptions to the mandatory appointment of U.S. counsel by foreign parties:

  • Applications filed prior to the August 3, 2019 effective date that have already been approved by the USPTO and require no further action by the applicant will not require appointment of U.S. counsel.
  • Canadian-licensed attorneys and agents may continue to serve as appointed representatives for Canadian parties before the USPTO. However, Canadian applicants must appoint a licensed U.S. attorney before filing any formal responses with the USPTO, and the USPTO will only correspond with a U.S. appointed attorney.

Therefore, if any substantive action is required, a foreign party will need to appoint U.S. counsel.

What Are the Consequences for Failing to Appoint a U.S. Attorney?

The consequences for failing to appoint U.S. counsel pursuant to the rules are severe and could lead to refusal by the USPTO to validate an application for filing, potential abandonment of an existing application not in compliance, sanctions against parties in pending or newly-filed proceedings, or other significant consequences, all of which could have a detrimental impact on clients and their trademark rights in the U.S. Therefore, the new rules are not to be taken lightly.

As an international law firm with a significant trademark practice, Faegre Baker Daniels represents many foreign-domiciled parties and is well-suited to continue representing foreign-domiciled parties in all matters before the USPTO and to help navigate the rule changes.

The material contained in this communication is informational, general in nature and does not constitute legal advice. The material contained in this communication should not be relied upon or used without consulting a lawyer to consider your specific circumstances. This communication was published on the date specified and may not include any changes in the topics, laws, rules or regulations covered. Receipt of this communication does not establish an attorney-client relationship. In some jurisdictions, this communication may be considered attorney advertising.

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