New trademark rule requires foreign trademark applicants to have US attorney.

A trademark is something that the producer of a product uses to brand their products. Traditionally a trademark is thought of as a word, phrase or symbol, however anything that is used to designate the source of a product can be illegible for trademark protection. The strength of a trademark in the United States is measured by the association consumers make between a trademark and a producer of a product. In the United States trademark law is governed by federal statute, state law and common law principles. The first person to use a trademark in commerce is considered the senior user, subsequent users are considered junior users. Senior users of a trademark are given priority over junior users. If a junior user uses a trademark in a way that causes consumers to be confused, with respect to the source of a product, that can be considered trademark infringement.

A trademark user can register a trademark in the United States by filing a trademark application with the United States Patent and Trademark Office. Using a trademark in commerce is the key to gaining a claim to a trademark, and registration grants the trademark user additional rights. Many companies choose to register their trademark to gain these additional rights.

In the past, any person could file a trademark application, however a recent change in United States Patent and Trademark Office rules affects trademark applicants who live in a country other than the United States. Effective as of August 3rd 2019 all foreign domiciled trademark applicants must be represented by a United States licensed attorney.

A “foreign-domiciled” trademark applicant, registrant, or party is either or both:

An individual with a permanent legal residence outside the United States or its territories
An entity with its principal place of business (headquarters) outside the United States or its territories.

United States licensed attorney is an individual that has active membership in good standing of a bar of the highest court of a U.S. state, commonwealth, or territory.

The purpose of this rule is to ensure that trademark applicants are given competent legal representation and to protect the integrity of the trademark register. Many countries require local attorneys to represent applicants. A significant number of trademark offices around the world require foreign-domiciled applicants and registrants to obtain local counsel as a condition for filing papers with those trademark offices.

For foreign-domiciled applicants filing applications using the Madrid Protocol under Trademark Act Section 66(a), the requirement for a United States licensed attorney will be made in all provisional refusals (office actions). Section 66(a) applicants file their initial application with the International Bureau of the World Intellectual Property Organization. The International Bureau transmits that application to the USPTO. There currently is no ability to designate an attorney on the International Bureau’s forms.

With respect to submissions made before this rule becomes effective:
Trademark applications and registrations – If someone other than a United States licensed attorney filed an application or application-related or registration-related submission with the USPTO before the effective date of this new rule, and the submission is otherwise acceptable, then the submission will be accepted. But if the USPTO issued an office action before the effective date of this rule, a United States licensed attorney must be appointed to respond after the effective date of the rule.
Trademark Trial and Appeal Board proceedings – For foreign-domiciled parties who are not represented by a United States licensed attorney, the Board will suspend the proceeding until a United States licensed attorney is appointed to represent the applicant in the proceeding.

The author of this blog is a United States licensed attorney and would be happy to discuss any concerns you may have.

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