News & Articles

New U.S. Trademark Rule Requires U.S.-Licensed Counsel for Foreign Applicants

Published 7/12/2019 

The United States Patent and Trademark Office (USPTO) announced that commencing August 3, 2019, all foreign–domiciled applicants, registrants, and parties to trademark proceedings will need to be represented by U.S.-licensed legal counsel. This new rule was said to be needed to safeguard the accuracy and integrity of the U.S. Trademark Register in response to the tens of thousands of inaccurate and/or possibly fraudulent filings by foreign applicants.

What does foreign-domiciled mean?

This would include: (1) any individual with a permanent legal address outside the U.S., and (2) any entity with its principal place of business (headquarters) outside the U.S.

Is the rule applicable to existing U.S. applications/registrations?

The rule applies to all current applications/registrations (as to responses to Office Actions, renewals, statements of use, etc.) and to all new applications.

Does this apply to Madrid Applications?

The rule does apply to filings with the World Intellectual Property Organization (WIPO) when there is a refusal (Office Action) but not as to the initial application.

We recommend that any foreign-domiciled applicants/registrants with trademark matters before the U.S. Trademark Office, immediately seek U.S. attorney representation. For information please feel free to contact Kevin Collette of Ryan Swanson & Cleveland, PLLC of Seattle, Washington at [email protected] or at 206-654-2252.

Kevin J. Collette is an attorney in Ryan Swanson’s Business Group and can be reached at 206-654-2252 or [email protected].

Because each situation is different, this information is intended for general information purposes only and is not intended to provide legal advice on any specific facts and circumstances. Ryan, Swanson & Cleveland, PLLC is a full-service law firm located in Seattle, Washington.

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