Gravel & Shea PC

New USPTO Regulations Require Foreign-Domiciled Trademark Owners To Use A U.S.-Licensed Attorney

New United States Patent and Trademark Office (“USPTO”) regulations effective August 3, 2019 require that all “foreign-domiciled” trademark applicants, registrants, and parties to Trademark Trial and Appeal Board (“TTAB”) proceedings appoint a U.S.-licensed attorney to represent them before the USPTO.  This includes Canadian trademark applicants and owners.

See: https://www.uspto.gov/trademark/laws-regulations/trademark-rule-requires-foreign-applicants-and-registrants-have-us

Why the change?  According to the USPTO, the change was necessary to preserve the accuracy and integrity of the trademark register, to guard against an increasing incidence of fraud affecting the international business community that relies on the trademark register and to increase compliance with U.S. trademark law and regulations, cutting down on improperly crafted submissions.

The new regulation applies not only to new applications, but also to any submission to the USPTO made after the effective date, including responses to office actions or other filings (including Declarations of Use, renewals and other necessary filings) relating to applications submitted before August 3rd.

We know this is a source of frustration for the many experienced trademark owners and intellectual property practitioners domiciled outside the U.S. who practice with expertise and integrity.  Canadian practitioners who have worked with the USPTO for years, even those who benefit from the reciprocal arrangements of the USPTO Office of Enrollment and Discipline (“OED”), will still need a U.S.-licensed attorney to file formal responses and correspond with the USPTO.  The experienced intellectual property counsel of Gravel & Shea are ready to assist our international partners with their USPTO filings as well as to provide guidance and counsel to trademark applicants within and without the United States.

For more information contact: 

Cassandra LaRae-Perez, Gravel & Shea PC, 802-658-0220 Ext. 213, claraeperez@gravelshea.com

 

Gravel & Shea PC October 2, 2019