The U.S. Patent & Trademark Office announced new rules regarding foreign trademark applicants and registrants today. The rules will also impact foreign parties to trademark disputes in front of the Trademark Trial & Appeal Board. The new rules require that foreign applicants and registrants hire a U.S. attorney to represent them. They will go into effect on August 3, 2019. This blog post discusses the key things that you need to know about these new rules.
Who Is Considered Foreign-Domiciled?
For individuals, the Trademark Office considers a person to be foreign-domiciled if they have a permanent legal address outside of the United States or its territories. That definition is simple enough. For legal entities, such as corporations or limited companies, things are a little more complicated. Legal entities are considered foreign if they have a principal place of business outside of the U.S. or its territories. This means that getting a P.O. Box or other mailing location will not be sufficient.
What Does This Mean for Foreign Applicants?
Simply put, foreign applicants, registrants, and parties to disputes will not be able to make most trademark filings without a licensed U.S. attorney. That means that they cannot file a trademark application without an attorney, for example. They will not be able to respond to office actions. For foreign registrants that already have a U.S. trademark registration, they will now need to have a U.S. attorney file their trademark renewals.
Additionally, Canadian applicants that had relied on a Canadian agent for their past U.S. trademark filings will now need a U.S. attorney. Although Canadian trademark attorneys agents can still be listed on applications, the USPTO will only correspond with the U.S. attorney.
Why Has the USPTO Set These Requirements?
Although these requirements might seem draconian, many other countries also require local legal representation for their trademark filings. The USPTO has seen a dramatic increase in trademark filings over the last several years. A major part of that increase comes from an increase in filings by foreign applicants. And there have been a lot of questions regarding the legitimacy of these foreign filings.
The Trademark Office relies on trademark attorneys to screen the information provided to them by clients. Without this crucial step, trademark applications that contain incorrect information or that are over broad can be registered. Over time, this contributes to a “clogging” of the Principal Register, which is the list of all the registered trademarks. If you have ever done your own knockout search and struggled to find a name, then you understand this issue. It can seem like no names are available, right? Well, many of the trademark registrations out there are not legitimate. These rule changes are an effort to try and prevent some of these illegitimate applications from getting to registration in the first place.
Need to Work with a Qualified U.S. Trademark Attorney?
If you are a foreign applicant, registrant, or party looking for an attorney that can represent you and make your U.S. trademark filings, I would be happy to assist you. I represent several international clients, including clients located in Canada, Mexico, Great Britain, Russia, Latvia, and Uganda. Please call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
