As of August 3, 2019, trademark applicants and registrants based outside of the United States will need a U.S.-based lawyer if they want to extend their protections to the U.S. A new rule announced by the U.S. Patent and Trademark Office (USPTO) states that the U.S.-based lawyer must be in good standing of a bar of the highest court of a U.S. state, commonwealth or territory.
This should increase business for trademark lawyers based in the United States, and HEITNER LEGAL is happy to assist foreign applicants/registrants who need assistance. The rule also affects any parties dealing with an issue within the Trademark Trial and Appeal Board (TTAB). We have a lot of experience handling those types of proceedings as well.
The USPTO provided three justifications for implementation of the new rule:
- Increase USPTO customer compliance with U.S. trademark law and USPTO regulations;
- Improve the accuracy of trademark submissions to the USPTO; and
- Safeguard the integrity of the U.S. trademark register.
We discovered an increasing number of foreign trademark applicants, registrants, and parties are filing inaccurate and possibly fraudulent submissions with the USPTO that do not comply with U.S. trademark law or the USPTO’s rules. Often, these submissions are made with the assistance of foreign individuals or entities not authorized to represent applicants at the USPTO.
Basically, the USPTO is rightfully interested in cutting down fraudulent applications as well as unintentionally poorly submitted applications. Additionally, it appears to be somewhat of a retaliatory rule against foreign jurisdictions that require foreign-domiciled applicants and registrants to obtain local counsel. Essentially, if they will not let U.S.-based lawyers handle the process from abroad, then why should the USPTO do them any favors?