Over the past several years, the U.S. Patent & Trademark Office has seen a steady increase in filings. Many of the filings contain fraudulent statements or misrepresentations. As a result, the USPTO has had to create new rules to combat fraud. For many parties, this means a trademark attorney is required to appear in USPTO proceedings. In this blog post, I discuss the current rules around the attorney requirement and when it applies.
When Is Hiring a Trademark Attorney Required?
First, it is important to note that when the USPTO requires a party to be represented by an attorney, it typically must be an attorney licensed to practice in the United States. If you are located outside of the United States, that means you will likely need to retain an attorney located in the U.S. Whether a party is required to be represented by an attorney depends on where the party is domiciled. The definition of domicile is discussed below.
If a party is domiciled outside of the U.S., then it will need to hire an attorney to nearly anything in front of the USPTO. For example, a U.S. trademark attorney will be required for the party to be able to register a trademark. If a party that is foreign-domiciled files an application without an attorney, the Trademark Office will issue an office action requiring that an attorney take over the application. Otherwise, the application will go abandoned.
In addition, a party domiciled outside of the U.S. must be represented for proceedings in front of the Trademark Trial & Appeal Board. This means either filing or defending against an opposition or cancellation proceeding will require an attorney. These proceedings are quite difficult and the chances of success without an attorney would be slim regardless. While U.S.-domiciled individuals and business entities may choose to represent themselves, that is not an option for foreign-domiciled parties.
What is a “Domicile”?
The trademark attorney requirement above is for foreign-domiciled individuals or entities. For individuals (or “natural person” to in legalese), the domicile is the person’s “permanent place of legal residence.” In other words, where the person lives. For business entities, the domicile is the “principal place of business” for that entity.
In order to determine whether a domicile is in the U.S. or outside the United States, the USPTO requires all applicants and parties in front of the TTAB to provide a domicile address. This address cannot be a P.O. Box or a mail forwarding service. It must represent the actual domicile of the person or business.
Need a Trademark Attorney to Represent You at the USPTO?
If you are a foreign-domiciled person or entity, you will need to be represented by an attorney at the U.S. Patent & Trademark Office. If you are looking for experienced representation, 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.
