U.S. Licensed Attorney Required for Trademark Registration in the U.S
On July 2, 2019, the United States Patent and Trademark Office (USPTO or Office) announced a new rule requiring all foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to be represented by an attorney who is licensed to practice law in the United States.
The requirement applies to all trademark applicants, registrants, and parties whose permanent legal residence or principal place of business is outside the United States. These applicants, registrants, and parties are required to have a U.S.-licensed attorney represent them at the USPTO in all trademark matters.
The Office amended the Rules of Practice in Trademark Cases to require applicants, registrants, or parties to a trademark proceeding whose domicile is not located within the United States (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to be represented by an attorney who is an active member in good standing of the bar of the highest court of a state in the U.S. (including the District of Columbia or any Commonwealth or territory of the U.S.).
A requirement that such foreign applicants, registrants, or parties be represented by a qualified U.S. attorney will instill greater confidence in the public that U.S. trademark registrations that issue to foreign applicants are not subject to invalidation for reasons such as improper signatures and use claims and enable the USPTO to more effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters.
Additionally, U.S.-licensed attorneys representing anyone before the USPTO in trademark matters are required to confirm they are an active member in good standing of their bar and to provide their bar membership information.
The Secretary of Commerce for Intellectual Property and Director of the USPTO, Bucharest-born Andrei Iancu, said that “businesses rely on the U.S. trademark register to make important legal decisions about their brands. In order to maintain the accuracy and integrity of the register, for the benefit of all its users, the USPTO must have the appropriate tools to enforce compliance by all applicants and registrants.” In addition, he added that “[t]his rule is a significant step in combating fraudulent submissions.”
The USPTO Commissioner for Trademarks Mary Boney Denison added that “many other countries worldwide have had this requirement for decades, and we believe that this new rule will help improve the quality of submissions to the USPTO”
This new trademark rule is effective on August 3, 2019. For a more thorough understanding of this new federal trademark law, please visit the rule page on the USPTO website.
Contact us, your business attorney in Florida, to register your trademark in the United States.