The United States Patent and Trademark Office (USPTO) recently announced a new rule requiring all applicants, registrants, and parties to Trademark Trial and Appeal Board (TTAB) proceedings residing outside the United States or its territories be represented by a U.S.-licensed attorney in all USPTO trademark matters. The new rule aims to increase customer compliance with U.S. trademark law and USPTO regulations, improve the accuracy of trademark submissions to the USPTO, and maintain the integrity of the U.S. trademark register. Effective August 3, 2019, all new applications, renewal filings, and TTAB disputes filed on behalf of any foreign-domiciled entity must be filed by an attorney who is licensed to practice law in the U.S. The new requirement will also apply to all current and new filings with the USPTO.
The new rule changes the scope of work permitted by Canadian patent and trademark agents in the U.S. Canadian patent agents may no longer represent parties before the USPTO. Certain Canadian trademark attorneys and agents may be recognized as additionally appointed practitioners. However, only U.S.-licensed attorneys are authorized to correspond with the USPTO on trademark matters. Attorneys representing foreign trademark owners at the USPTO are required to confirm active membership in good standing of a bar of the highest court of a U.S. state, and to provide their bar membership information.
For more information regarding the new trademark rule, visit the USPTO website