Do you need a United States attorney to get a trademark in the United States?

When a business brands its products with a word, phrase or symbol to distinguish its products from competitors products that brand can be considered a trademark. In the United States trademark law is a combination of federal laws, state laws and common law principles. The key thing unifying these three sources of laws is that the purpose of a trademark is to protect consumers from inferior quality goods. A company’s right to a trademark is strongly connected to a consumer’s association of the trademark with the company’s products.

Registering a trademark in the United States is not required but many trademark owners choose to register their trademark. Registering the trademark will grant the owner of the trademark additional rights and certain presumptions under the law. The United States Patent and Trademark Office is the agency which grants trademark registrations in the United States. As of today a trademark owner can be file paperwork with the United States Patent and Trademark Office without the assistance of an attorney, but new rules are being proposed which might change that.

The United States Patent and Trademark Office proposes to amend its rules to require foreign trademark applicants and registrants to be represented by a United States licensed attorney. A United States licensed attorney means an attorney that is registered to practice and is in good standing of the bar of one of the states or political subdivisions of the United States. This requirement extends to the filing of all trademark documents with the United States Patent and Trademark Office.

The United States Patent and Trademark Office states that the purpose of this proposed rule is to (i) ensure that the United States Patent and Trademark Office can effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters; (ii) provide greater confidence to foreign applicants and the public that registrations that issue to foreign applicants are not subject to invalidation for reasons such as improper signatures and use claims; and (iii) aid United States Patent and Trademark Office efforts to improve accuracy of the United States Trademark Register.

Stated simply, the United States Patent and Trademark Office wants to have someone they can hold accountable if there is a problem with a trademark application, and they can only hold an attorney accountable if the attorney is admitted to practice in the United States. The proposed rule is intended to protect foreign applicants from unscrupulous businesses that claim to have the ability to get trademarks registered in the United States but frequently fail to do so. The proposed rule is also intended to reduce nuisance filings to cancel trademarks, signed by a manger of the company making the filing, that are intended to harass competitors rather than protect a legitimate interest in a trademark.

The rule does not require the attorney be a United States citizen, based on a quick reading of the proposed rule it appears foreign attorneys who are admitted to a bar in the United States could represent their clients before the United States Patent and Trademark Office.

Once the proposed rule is published on November 1st 2018 there will be a three month period for public comment before the United States Patent and Trademark Office adopts the rule. How this will affect trademark applications filed under the Madrid protocol, or pending applications with no United States attorney listed, has not been addressed yet.

It would be prudent for trademark owners to consult with an attorney familiar with trademark law to formulate the best plan of action.

If you have questions or comments for the authors of this blog please email us at: admin@uspatentlaw.cn