After August 3, 2019 All Foreign Trademark Applicants Will Be Required To Appoint A Licensed U.S. Attorney

The United States Patent and Trademark Office (USPTO) announced a new rule that all trademark applicants and registrants whose domicile or principal place of business is not located within the United States must be represented by an attorney licensed in the United States. This rule becomes effective on August 3, 2019.

• This rule will not immediately impact applications filed before August 3, 2019 or existing registrations. However, if an application filed before August 3, 2019 becomes the subject of an office action issued after the date, or if it is necessary to file an extension of time or a specimen to complete an application under Section 1(b) (intent to use), the foreign applicant will be required to designate an attorney licensed in the United States to respond to the office action.
• Foreign owners of registrations issued prior to August 3, 2019 will not need to appoint a qualified attorney licensed in the United States until it is time to file a declaration of continued use or a renewal.
• After August 3, 2019, all new filings at the USPTO not in compliance with this rule will be informed through an office action. The applicant will have the usual six (6) month period to respond to the office action and failure to comply will result in abandonment of the application.
• Foreign filers using a TEAS Plus application, the most popular application used by foreign filers, will be unable to submit the application unless the filer completes the section designating a qualified US attorney as the applicant’s representative.
• There is one exception to this rule. Applications filed under the Madrid Protocol that satisfy all formalities and statutory requirements, and thus are ready for publication without the issuance of any office action, are not required to appoint a qualified US attorney of record. However, if the application filed under the Madrid Protocol receives an office action, the applicant will be required to designate a qualified US attorney when responding to the office action.

For more information about the USPTO’s new requirement, please visit https://www.govinfo.gov/content/pkg/FR-2019-07-02/pdf/2019-14087.pdf

For questions about how to comply with the United States Patent and Trademark Office’s new rule, please contact Beth Frenchman at bfrenchman@gibney.com or at (212) 906-3334.