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Starting August 3rd, Foreign trademark applicants need to have a US attorney

July 3, 2019

On July 2nd, the USPTO published a rule that requires foreign trademark applicants have a US attorney representing them before the USPTO (see Federal Register link) and the rule will become effective August 3, 2019. 

 

This rule is very similar to many other countries which require foreign applicants have local attorneys assisting them.  In Japan, applicants who do not reside or are not domiciled in Japan must appoint a representative in Japan through which they will correspond with the JPO.  In the EU, foreign applicants must appoint a local representative to correspond with the EU IPO.

 

The USPTO hopes this rule will achieve three goals:

 

1. To ensure the accuracy of submissions to the USPTO
2. To increase customer compliance with federal trademark law
3. To ensure the integrity of the US trademark register

 

Should the rule achieve its goals, it should cut down on the number of "poor" quality trademark applications that are cluttering the USPTO's trademark registry. 

 

This rule affects all foreign trademark applicants who must correspond with the USPTO after August 3rd, such as a response to an office action, or post-registration maintenance papers.

 

This rule does not affect trademark applications that initially are filed through the Madrid Protocol.  However, if the foreign applicant must correspond with the USPTO, such as respond to an office action, then the applicant will have to retain a US attorney to respond to the office action.

 

 

[updated on 10/21]

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