Applying for a trademark registration in the US, you will need a US licensed attorney now
By Himanshu Joshi, for Legal Corner LLP. Himanshu is a final year student of NALSAR University of Law, Hyderabad.
(The views expressed here are not to be considered as legal opinion. You may not rely on this article as legal advice. You should reach out to me (firstname.lastname@example.org) if you are interested in applying for a US trademark registration or would like me to represent you in a Trademark related).
The United States Patent and Trademark Office (USPTO) amended the rules of practice in trademark cases. The following rules were changed and came in effect from 3rd August, 2019:
1) Rules of Practice in filings pursuant concerning the International Registration of Trademarks, 2) Rules regarding Representation of Others before the United States Patent and Trademark Office
The changed rule now states that – “it is now required by applicants, registrants, or parties to a trademark proceeding whose domicile is not located within the United States (U.S.) to be represented by an attorney who is an active member in good standing of the bar of the highest court of a state in the U.S.A”.
Why this rule? Will this rule affect me?
A requirement that such foreign applicants, registrants, or parties be represented by a qualified U.S. attorney will instill greater confidence in the public that U.S. trademark registrations that issue to foreign applicants are not subject to invalidation for reasons such as improper signatures and use claims and enable the USPTO to more effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters. In the past few years, the USPTO has seen many instances of unauthorized practice of law (UPL) where foreign parties who are not authorized to represent trademark applicants are improperly representing foreign applicants before the USPTO. As a result, increasing numbers of foreign applicants are likely receiving inaccurate or no information about the legal requirements for trademark registration in the U.S., such as the standards for use of a mark in commerce, who can properly aver to matters and sign for the mark owner, or even who the true owner of a mark is under U.S. law. This practice raises legitimate concerns that affected applications and any resulting registrations are potentially invalid.
Foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings, including Canadian trademark filers, must appoint and be represented before the United States Patent and Trademark Office (USPTO) by an attorney who is licensed to practice law in the United States.
Changes Notified in Code of Federal Regulations and requirements for US based Attorneys
The USPTO revised the rules in parts 2, 7, and 11 of title 37 of the Code of Federal Regulations to require foreign applicants, registrants, or parties to a proceeding mandatorily be represented by an attorney, as defined in Section 11.1, of title 37 Code of Federal Regulations (CFR). In Section 11.1, that is, an attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any Commonwealth or territory of the U.S.) and who is qualified under Section 11.14 (a), 37 (CFR) 11.14 (a), to represent others before the Office in Trademark related matters.
U.S.-licensed attorneys representing any trademark filers must provide all of the following:
1) Name, postal address, and email address.
2) Statement confirming to their active membership in good standing of a bar of the highest court of a U.S. state, Commonwealth, or territory
3) Bar membership information (state, bar number if applicable, and year of admission).
(I am an attorney licensed to practice law in New York and District of Columbia. Please email me at email@example.com for legal inquiries or if you wish to set up a free consultation)