US-Licensed Attorneys Required for Foreign Trademark Registration


USPTO Rule Requires US-Licensed Attorney for Foreign Trademark Applicants

The US Patent & Trademark Office (USPTO) has issued a new rule requiring foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board (TTAB) proceedings, including Canadian parties, to be represented by attorneys licensed to practice law in the United States.

The Rule becomes effective on August 3, 2019, and is intended to protect the US trademark register from inaccuracy and outright fraud.

The USPTO has observed that many problematic applicants originate with foreign individuals or entities not actually empowered to represent applicants at the USPTO (i.e., licensed to practice law in a U.S. state or the District of Columbia).

Canadian Trademark Agents and Attorneys Also Affected

Canadian patent agents and attorneys will no longer be able to represent Canadian trademark applicants or other parties before the USPTO. They will be able to act as “additionally appointed practitioners” who can represent Canadian clients—but the USPTO will correspond only with the also-appointed US lawyer.

Such “additionally appointed practitioners” will need to be reciprocally recognized by OED, but they will need to retain a US lawyer to file actual responses to USPTO office actions and other items.

Canadian patent agents will simply, after the effective date of the new rule, not be allowed to represent Canadian parties any longer.

Detroit Michigan Trademark Attorney: The Bottom Line

The bottom-line for foreign USPTO parties is that it is essentially that you collaborate with a knowledgeable US-based trademark registration lawyer for your US trademark applications.

Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting craft brewers, vintners, distillers, and others in all industries with trademark registration, trademark renewal, trademark monitoring, and Office Action refusal response matters.

We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration success.

Click the “Register Your Trademark” button below to schedule your initial consultation and to begin your brand protection journey.