Effective August 3, 2019, the U.S. Patent and Trademark Office Makes a Big Splash through the Adoption of its New Trademark Law Concerning Foreign Trademark Applicants in an Effort to Preserve and Protect the Trademark Registry

Author: Gregory Brescia

On August 3, 2019, non-U.S. domiciliaries will require representation by a U.S. licensed patent lawyer for all matters related to trademark applications, registrations, and parties to Trademark Trial and Appeal Board Proceedings (collectively referred herein as, “foreign applicants”). See Federal Register – Trademark Laws as of August 3, 2019. In addition to the adoption of the above, the USPTO is requiring all U.S. licensed attorneys representing foreign trademark applicants to submit proof of their active state bar membership. The purpose of this recent adoption resonates from the USPTO’s efforts to (1) improve the quality of the federal trademark register; (2) stop the unlicensed practice of law before the USPTO; and (3) assist in regulatory compliance.

Many foreign applicants may ask: “how will this impact me?” Prior to the adoption of this new rule, foreign applicants had the ability to prosecute and handle all trademark-related matters on their own behalf. Of course, foreign applicants had the ability to retain foreign counsel as well, so long as certain requirements were met. With the adoption of this new rule, foreign applicants will be required to retain U.S. counsel to file applications, respond to office actions, correspond with examining attorneys at the USPTO, and handle post registration submissions.

The primary changes that foreign applicants will see through the adoption of this new rule include the following:

1. New applications filed by foreign applicants on or before August 3, 2019 under Sections 1 or 44 of the Lanham Act must obtain U.S. counsel to prosecute a complete application from inception through maintenance.
2. New applications filed by foreign applicants on or after August 3, 2019 under section 66(a) of the Lanham Act, a subsection of the Madrid Protocol, will not require U.S. counsel for the initial filing so long as prior to the publication, the foreign application submitted satisfies all formalities and statutory requirements. In the event the application does not meet all the formalities and statutory requirements, U.S. counsel is required.
3. For applications filed by foreign applicants prior to August 3, 2019 that require further action, applicants must retain U.S. counsel to handle any actions, including post-registrations maintenance.
4. Retaining U.S. counsel is not necessary for applications filed by foreign applicants prior to August 3, 2019; however, U.S. counsel must be retained for any subsequent actions.
5. Retaining U.S. counsel is required for marks registered by foreign applicants prior to August 3, 2019 for handling any post registration actions, as well as any post registration maintenance on or after August 3, 2019.

As discussed above, the adoption and implementation of this new rule is cornerstone of the USPTO’s initiative to preserve and protect the quality of the U.S. Trademark Registry. We encourage foreign applicants to take these recent changes seriously as they can have a significant impact on the validity and their current and future U.S. trademark portfolios. Moving forward, Gordon Rees Scully Mansukhani’s Intellectual Property team will monitor the development and implications associated with the USPTO’s recent rule adoption. Should you have any questions, comments or concerns regarding the USPTO’s new rule, please feel free to contact our offices.

About the author: Gregory Brescia is a registered patent attorney and a member of Gordon Rees Scully Mansukhani’s Intellectual Property Practice Group. His practice focuses on intellectual property prosecution and litigation. He also counsels clients on intellectual property enforcement and corporate transactions involving formation, compliance, and licensing. Mr. Brescia’s biography can be found here.