ICYMI: New United States Patent and Trademark Office (USPTO) Rule Requires U.S. Attorney for Everything

Karen A. Monroe

July 31, 2019

Effective August 3, 2019, all business conducted with the USPTO will require a U.S. attorney. No longer will non-US applicants be able to file their own trademarks or have their non-U.S. attorney do so. There is an exception for Canadian attorneys who can be recognized as additionally appointed practitioners; however, the USPTO will correspond only with the appointed U.S. licensed attorney. 

The new rule uses the term “foreign-domiciled” persons which means an individual with a permanent legal residence outside the U.S. or an entity with its principal place of business outside the U.S. Therefore, if you are “foreign-domiciled” the new rule applies. In the USPTO’s data analysis although the majority of “foreign-domiciled” persons use U.S. attorneys, there is a growing number of applicants/registrants who do not. 

For non-U.S./foreign domiciled applicants filing in the U.S. through the Madrid Protocol (WIPO), the requirement for a U.S. attorney will be imposed in all provisional refusals; that is Office Actions. In general, many if not most WIPO/Madrid Protocol applicants receive a provisional refusal because of a problem with an overbroad description of goods and services.

For non-U.S./foreign domiciled persons or entities who already are using a U.S. attorney for their USPTO business, the new rule has no effect. The new requirement for U.S. counsel is consistent with the practice of most other countries which require “local” counsel.   

The new rule is in response to a real problem of “foreign-domiciled” applicants failing to comply with U.S law. The new rule’s objectives are to eliminate problems such as improper signatures or invalid use claims and to enforce foreign applicant compliance with U.S. law. 

If you are a “foreign-domiciled” person or entity who does not yet have U.S. trademark counsel, please do not hesitate to contact me at kmonroe@wilkauslander.com.