Foreign-Domiciled Trademark Applicants and Registrants Required to Retain Local Counsel for U.S. Trademark Matters

Beginning August 3, 2019, all foreign-domiciled trademark applicants and registrants will be required to retain licensed counsel in the United States to prosecute trademark applications, file post-registration maintenance documents, file submissions in Madrid applications, or respond to Trademark Trial and Appeal Board (“TTAB”) proceedings.

A ”foreign-domiciled” trademark applicant or registrant is:

• (1) an individual with a permanent legal residence outside the United States or its territories, or
• (2) an entity with its principal place of business (e.g. headquarters) outside the United States or its territories.

These rule changes are in response to an increase in foreign applicants and registrants representing themselves pro se in trademark proceedings without sufficient familiarity with U.S. rules and laws, such as requirements associated with use in commerce and specimens. The new rules are designed to ensure that trademark registrations are issued and maintained in strict compliance with local rules and laws, thereby strengthening the rights of trademark owners in the United States and instilling greater public confidence in the trademark registration process.

There are only three exceptions to these new rules:

First, a foreign-domiciled party who filed a trademark application before August 3, 2019 does not need to retain licensed U.S. counsel as long as the application is otherwise acceptable. However, if an office action issues, the foreign-domiciled applicant will need to retain licensed U.S. counsel to respond. Once the application registers, the foreign-domiciled party will need to retain licensed U.S. counsel file any post-registration maintenance documents necessary to maintain the registration.

Second, a foreign-domiciled party that files a trademark application through the Madrid Protocol with an extension into the United States does not currently need to retain licensed U.S. counsel because the International Bureau of the World Intellectual Property Organization currently has no mechanism for designating a U.S. attorney. However, it appears that all Madrid extensions into the U.S. will eventually need to appoint a U.S. attorney once the Madrid system is updated to allow for the appointment of a U.S. attorney. For now, if the application satisfies all formalities and statutory requirements then it will be approved for registration notwithstanding lack of local counsel. Only a small minority of applications are likely to fit into this exception as only 2.9% of Madrid extensions into the US in fiscal year 2017 initially satisfied all formalities and statutory requirements. If an office action issues, the foreign-domiciled applicant will need to retain licensed U.S. counsel to respond. Once the application registers, the foreign-domiciled party will need to retain licensed U.S. counsel file any post-registration maintenance documents necessary to maintain the registration.

Third, Canadian patent agents and Canadian trademark attorneys and agents currently authorized to represent Canadian trademark applications, registrations, or parties in pending trademark matters can continue to do so until August 3, 2019. After August 3, 2019, only Canadian trademark attorneys and agents will continue to be reciprocally recognized as an additionally appointed practitioner for Canadian parties, but the Canadian applicant or registrant must also appoint a licensed U.S. attorney to file formal responses, and the USPTO will only correspond with the appointed licensed U.S. attorney.

To ease the burden on foreign-domiciled parties, Lewis Roca Rothgerber Christie will waive its professional fees associated with recording itself as local U.S. counsel for foreign-domiciled parties with active pending applications, active registrations, or active TTAB proceedings. Our qualified licensed attorneys are prepared to answer any questions about these new trademark rules and provide representation to foreign-domiciled parties as required.

For more information, please contact Jennifer Van Kirk, Oliver Bajracharya, or David Jackson, or reach out to your Lewis Roca Rothgerber Christie representative.