• Paul Peter Nicolai

U.S. Licensed Attorney Required for Foreign Trademark Applicants/Registrants

The United States Patent and Trademark Office effected a new rule requiring that foreign trademark applicants and registrants have US counsel. The new rule went into effect on August 3rd, 2019.

Some of the highlights:

  • USPTO requires foreign applicants whose domicile or principal place of business is not in the U.S. or its territories to be represented by licensed U.S. counsel or, in limited cases, an authorized foreign attorney.

  • The rule applies to ALL filings in the USPTO.

  • Applicants flagged under the rule will be issued an Office Action requiring the appointment of U.S. counsel within six months of the issuance of the Office Action.

  • Foreign citizens domiciled in the United States may still file without an attorney, but must be prepared to show proof of being ‘legally domiciled’ in the U.S.

  • Foreign companies with U.S. headquarters may still file without an attorney, but, again, must be prepared to prove it.

  • The new rule also applies to Madrid Protocol applications. However, the Madrid Protocol filing system does not currently include a method for appointing counsel through the online forms, so the USPTO will temporarily allow Madrid Protocol applications that otherwise would not require further examination to proceed without a U.S. attorney until the international forms are updated

  • Authorized Canadian agents will still be allowed to prosecute applications for Canadian citizens, but must appoint U.S. counsel as their domestic representative

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