U.S. Attorney Required? USPTO Proposes New Rule that Would Require Foreign Trademark Applicants to be Represented by a U.S. Attorney

March 15, 2019

By Cynthia A. Moyer

lady justice

On February 15, 2019, the U.S. Patent and Trademark Office (USPTO) issued a Notice of Proposed Rulemaking, proposing to amend the Rules of Practice in Trademark Cases to require all applicants, registrants and parties to a proceeding whose domicile or principal place of business is not in the U.S. or its territories to be represented by “an active member in good standing of the bar of the highest court of a state in the U.S. (including the District of Columbia and any Commonwealth or territory of the U.S.).”

According to the Notice of Proposed Rulemaking, the USPTO has “experienced a significant surge in foreign filings, with the number of applications from foreign applicants increasing as a percentage of total filings.” Many, but not all, of the foreign applicants are pro se. The USPTO stated it has seen many instances of foreign parties who are not attorneys representing foreign applicants before the USPTO. This unauthorized practice of law is problematic because those non-attorneys and the foreign applicants have been filing “inaccurate and possibly fraudulent submissions,” including “digitally altered specimens.” The proposed rule would “enable the USPTO to more effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters.” And the USPTO contends that such a requirement would “instill greater confidence in the public that U.S. registrations that issue to foreign applicants are not subject to invalidation for reasons such as improper signatures and use claims."

The proposed rule would apply to all applications regardless of filing basis (including those filed under 66(a) (Madrid based applications)). If a foreign applicant files an application without U.S. counsel, the Trademark Office is proposing to issue an Office Action and the applicant would then have six months to retain U.S. counsel.

The USPTO is taking comments from the public on the proposed rule until March 18, 2019. While the comment period is still open as of the writing of this article, to date the comments have been overwhelmingly in favor of the proposed rule (28 submissions with 23 in favor).

In the event that this proposed rule is adopted, the trademark team at Fredrikson & Byron stands ready to assist you with any and all of your trademark needs.