The United States Patent and Trademark Office (USPTO) has published new rules which will require non-US domiciled trade mark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to be represented by a US-qualified lawyer. The rules come into force on August 3 2019.
The USPTO’s summary of the rules, announced on July 2 2019, states:
“This rule requires applicants, registrants, or parties to a proceeding whose domicile is not located within the U.S. or its territories to be represented by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any Commonwealth or territory of the U.S.) and who is qualified to represent others before the Office in trademark matters.”
The USPTO’s key justification for the new rules is that it will help safeguard the ‘accuracy and integrity’ of its trade mark register. The Office also pointed out that other trade mark offices require foreign-domiciled applicants to use local representation for filing. “Many other countries worldwide have had this requirement for decades,” said USPTO Commissioner for Trademarks Mary Boney Denison in a press release
The USPTO has published guidance notes on who will be classed as 'foreign-domiciled', the information a US lawyer must provide to satisfy the new rule, and the position of Canadian patent and trade mark attorneys/agents. The guidance notes and likely questions concerning the rules can be found here
. The Office also addressed some concerns, such as the costs of appointing a US attorney and Madrid applications, highlighted during the consultation period (see the official rule document
published in the Federal Register).
You can find the US firms ranked for trade mark filing and prosecution work at national level here
or click on ‘United States’ above to see the state rankings.
Previous Managing IP coverage on this issue can be found here