Last Updated on December 18, 2022 by Anda Malescu
The United States Patent and Trademark Office (USPTO) published a proposal to require foreign-domiciled trademark applicants and registrants to use a U.S.-licensed attorney
USPTO published a proposal to change the federal trademark law. The rule would require foreign-domiciled trademark applicants and registrants to be represented by an attorney who is licensed to practice law in the United States. The final action is scheduled for June 2019 and will become effective in July 2019.
Overview of the proposed changes
The requirement applies to trademark applicants, registrants, and parties who have a domicile or a principal place of business outside the United States. The proposed changes would require these applicants, registrants, and parties to hire an attorney who is licensed to practice law in the United States to represent them at the USPTO. The U.S.-licensed attorney must be an active member in good standing of the bar of any U.S. state.
The proposed requirement is similar to the requirement that currently exists in many other countries, such as Brazil, Chile, the People’s Republic of China, Israel, Japan, Jordan, Republic of Korea, Morocco, and South Africa, as well as the European Union’s Intellectual Property Office.
In the past few years, the USPTO has seen many instances of unauthorized practice of law where foreign parties who are not authorized to represent trademark applicants are improperly representing foreign applicants at the USPTO. As a result, increasing numbers of foreign applicants are likely receiving inaccurate or no information about the legal requirements for trademark registration in the U.S., such as the standards for use of a mark in commerce, who can properly declare to matters and sign for the mark owner, or even who the true owner of a mark is under U.S. law. This practice raises legitimate concerns that affected applications and any resulting registrations are potentially invalid, and thus negatively impacts the integrity of the U.S. trademark register.
The proposed requirement is necessary to enforce compliance by all foreign applicants, registrants, and parties with U.S. statutory and regulatory requirements in trademark matters. Therefore, it will not only aid the USPTO in its efforts to improve and preserve the integrity of the U.S. trademark register, but will also ensure that foreign applicants, registrants, and parties are assisted only by authorized practitioners who are subject to the USPTO’s disciplinary rules.
The objectives of the proposed rule are to:
- Greater confidence in the U.S. trademark register. Instill greater confidence in the public that U.S. registrations that issue to foreign applicants are not subject to invalidation for reasons such as improper signatures and use claims
- Increase compliance with federal law. The proposed rule will enable the USPTO to more effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters.
- Ensure the accuracy of submissions to USPTO.
Change affects U.S. -licensed attorneys
In addition to the above proposed change, U.S.-licensed attorneys representing anyone before the USPTO in trademark matters would be required to confirm that they are an active member in good standing of their bar and provide their bar membership information.
Source: United States Patent and Trademark Office
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