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What is the New Trademark Office Rule Requiring U.S. Attorneys?


The United States Patent and Trademark Office (USPTO) recently issued a new rule that affects all trademark filings owned by parties based outside of the U.S. The rule is that, essentially, everyone who’s doing business with the Trademark Office must be represented by an attorney licensed to practice law in the United States. The new rule went into effect on August 3, 2019.

The previous status quo didn’t include any such requirement. Foreign trademark owners could be represented by a foreign attorney or could simply handle their own U.S. trademark filings without legal counsel.

The USPTO’s press release regarding the new rule states:

The requirement applies to all trademark applicants, registrants, and parties whose permanent legal residence or principal place of business is outside the United States. These applicants, registrants, and parties are required to have a U.S.-licensed attorney represent them at the USPTO in all trademark matters.

This rule applies to parties who are filing new trademark applications, those who own pending applications or whose marks have registered, as well as anyone appearing before the USPTO’s Trademark Trial and Appeal Board.

Essentially, if you’re a foreign individual or entity doing business with the USPTO’s trademark department, you need to work with an attorney licensed to practice in the U.S.

Why was this new rule put into place? According to an Op-Ed by Under Secretary of Commerce for Intellectual Property and Director of the USPTO Andrei Iancu and Commissioner for Trademarks Mary Boney Denison, the intention is to “respond to both the unauthorized practice of law and the rise in fake or suspicious specimens of use”.

Translation: lots of foreign entities – particularly Chinese firms – have been less than scrupulous about their trademark filings.

In most cases, when you apply to register or renew a trademark with the USPTO, you need to provide a “Specimen of Use” – meaning, evidence that your mark is being used in interstate commerce in connection with the goods and services listed in your application. The USPTO audits these filings and has identified foreign filers as the source of a disproportionate number of “fake or suspicious” specimens. These filings have the effect of costing the USPTO money and clogging up the system for good-faith trademark applicants.

This new rule will hopefully have the effect of curbing these phony filings, because a trademark scammer will have to go to the trouble of hiring a U.S.-based attorney whose law license could theoretically be jeopardized by a pattern of fraudulent trademark filings. On the other hand, the new rule will substantially increase the cost of filing and maintaining trademark registrations for anyone based outside the U.S. It also imposes a sort of cost on U.S.-based filers (or at least on their hardworking attorneys), as trademark attorneys (like me) now need to take the extra step of validating their U.S. law license in each filing.

Need a U.S.-based attorney for your trademark filing? Reach out to me.

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