Foreign-Domiciled Trademark Applicants, Registrants, and Parties Must Now be Represented by US Licensed Attorneys at the USPTO

by Joshua B. Goldberg (Nath, Goldberg & Meyer – U.S.A.)

The U.S. Patent and Trademark Office (USPTO) recently announced that, beginning August 3, 2019, it will require all foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to be represented by an attorney licensed to practice law in the United States.

This new rules package is intended to: (1) increase compliance with U.S. trademark law and USPTO regulations, (2) improve the accuracy of trademark submissions to the USPTO; and (3) safeguard the integrity of the U.S. trademark register.

Why Now?

The USPTO has recently experienced a significant surge in “foreign-domiciled” trademark applicants, registrants, and parties filing inaccurate and fraudulent submissions (e.g., digitally created and doctored specimens of use) that do not comply with USPTO rules. In many cases, these submissions are made by foreign individuals or entities that are not U.S. licensed attorneys.

For example, in fiscal year 2015, 19% of U.S. trademark applications were filed by non-US applicants, of which 25.4% were filed pro se. In stark contrast, in fiscal year 2017, 26% of U.S. trademark applications were filed by non-US applicants, of which 44.0% were filed pro se.

Per the new rules, a “foreign-domiciled” trademark applicant, registrant, or party is defined as: (1) an individual with a permanent legal residence outside the U.S. or its territories; and/or (2) an entity with its principal place of business (headquarters) outside the U.S. or its territories.

Impact on Madrid Applications?

A “foreign-domiciled” trademark applicant submitting an application based on section 66(a) of the Lanham Act (Madrid Application), is also subject to this new requirement.

Currently, there is no provision for designating a local attorney in a Madrid application initially filed with the International Bureau of the World Intellectual Property Organization. Accordingly, the USPTO will waive the requirement to appoint a licensed U.S. attorney prior to publication for the small percentage of Madrid applications (2.9% of all Madrid applications in fiscal year 2017) submitted with all formalities and statutory requirements satisfied. On the other hand, for the remaining 97.1% of Madrid applications, foreign-domiciled Madrid applicants will be required to appoint a licensed U.S. attorney upon receipt of an Office Action.