Last Updated on December 17, 2022 by Anda Malescu
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 U.S. Licensed Attorney required for Trademark Registration in the U.S.
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.
Why is a US Licensed Trademark Attorney Required for Trademark Registration in the US?
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.
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Intellectual Property and Director of the USPTO
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.
Trademark Registration Process with USPTO
For the most part intellectual property registration in the United States requires federal registration with the USPTO in order to protect the trademark owner against the unauthorized use of the trademark across the United States. However, trademark applicants can also acquire trademark registration for goods or services at the state level as long as they file an application with the specific trademark office in each state the trademark protection is needed.
The important aspect to understand is that a trademark registered at state level only affords protection within that state and does not protect from unauthorized use of the trademark in another state. Each state can vary in the exact protections offered and the specific application process, but in general, most states pattern the benefits of trademarks after the International Trademark Association guidance. However, the federal registration of the trademark with USPTO provides protection of the unique identity of the trademark not only throughout the United States but also across all of its possessions and territories, including Puerto Rico, U.S. Virgin Islands, Guam, American Samoa, and the Commonwealth of the Northern Mariana Islands.
In order to register a trademark for goods or services used in the United States, trademark applicants, whether foreign domiciled or domestic, must go through a comprehensive application process to register a certain trademark with the USPTO. For the foreign domiciled trademark applicants, registration with USPTO at federal level is essential to protect the trademark especially since foreign domiciled applicants have already used and built a strong trademark abroad before considering the United States.
If you are an applicant domiciled in a country outside the United States, please keep in mind that starting on August 3, 2019, you must be represented at the USPTO by a U.S. – licensed attorney who is licensed to practice law in the United States.
This is also the case if you have filed your trademark application through the World Intellectual Property Organization (WIPO) and you designated the United States under the Madrid Protocol.
Steps for Trademark Registration Process with USPTO?
The first step in the trademark registration process is to select the mark you wish to protect. Some trademarks are not capable of serving as the basis for a legal claim by the owner seeking to stop others from using a similar mark on related goods or services for various reasons. After selecting a trademark, you must identify the format of the mark you wish to protect, the precise goods or services to which the trademark will apply and the filing basis.
The filing basis for a specific trademark refers to the legal ground in the United States Trademark Law on which you intend to rely when filing your trademark or service mark application with the USPTO. In general, the filing basis for your application falls into one of four categories: use in commerce basis, intent-to-use basis, foreign registration basis and foreign application basis (also known as foreign priority basis). Your attorney can assist you to determine the filing basis before submitting the application with the USPTO.
The second step in the registration process is prepare and submit the application with the USPTO by using their online application system, the Trademark Electronic Application System (TEAS). The fees and payment for an initial online filing vary between $250 and $350 for one mark in one class. If you have multiple marks that you would like to register or you want to register a trademark in more than one class of goods or services, the USPTO requires to pay additional filing fees and payment is required before the application can be approved. In addition to the filing fees and payment schedule imposed by USPTO, you are responsible to pay your trademark attorney’s fees. To find out more about the trademark filing fees and payment schedule, please visit trademark fee information.
Once the application is submitted, the third step is to work with the assigned USPTO examining attorney. After the USPTO determines that you have met the minimum filing requirements, an application serial number is assigned, and the application is forwarded to an examining attorney. This process can take 3 to 4 months. The examining attorney reviews your application to determine if it complies with United States trademark law and if it includes all required fees and payment. Throughout the entire process, you should periodically monitor the progress of your application through the Trademark Status and Document Retrieval (TSDR) system. It is important to check application status through TSDR every 3-4 months after the initial filing of the application, because otherwise you may miss a filing deadline. See checking status for more information.
If the examining attorney determines that a mark should not be registered, the examining attorney will issue a letter called an Office Action to you explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. If the examining attorney sends you an Office Action, you, or your attorney, must submit a response to the Office Action that is received by the USPTO within 6 months of the issue date of the Office Action, or the application will be declared abandoned.
In the event that the USPTO examining attorney raises no objection to registration of your mark, or if you overcome all objections, the fourth step is for the examining attorney to publish the trademark for opposition in the “Official Gazette,” a weekly publication of the USPTO. If no one else is opposing your trademark within 30 days from the publication date, then the trademark enters the last step which is the actual registration and the USPTO registers the mark and sends you a certificate of registration.
What are your rights after the trademark is registered with USPTO?
After the trademark is registered, you as the trademark owner are responsible for enforcing your rights and policing the use of your trademark. Even more, it is important to understand that a United States trademark does not afford protection in another country and in order to seek protection in other countries you must apply for a trademark in each of the other countries. The intellectual property rights (IPR) Toolkits available on the USPTO website can assist you with information about protecting and enforcing intellectual property rights in specific markets and contact information for local IPR offices abroad and U.S. government officials available to help you. On the USPTO website you can find an IPR Toolkit for China and the UK. For more information, please visit the IPR Toolkits.
The trademark application process in the United States can be complex and lengthy and present a number of challenges especially to foreign domiciled applicants.
Malescu Law can assist
Contact us or schedule a consultation with your US licensed trademark attorney in Miami, Florida USA to register your trademark in the United States.
Malescu Law P.A – licensed trademark attorneys for Trademark Registration in the United States
