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New Trademark Rule Requires Foreign Applicants and Registrants to Use U.S.-Licensed Attorney

Eric R. MoranAugust 2, 2019 (snippets Alert)

Effective August 3, 2019, trademark applicants, registrants, and parties to Trademark Trial and Appeal Board (“TTAB”) proceedings domiciled outside of the United States (“foreign-domiciled”), must be represented before the U.S. Patent and Trademark Office (“USPTO”) by an attorney who is licensed to practice law in the United States. As of this effective date, a U.S.-licensed attorney will be required to file all trademark-related materials for foreign-domiciled applicants, registrants, and parties with the USPTO. The Office considers individuals and entities to be “foreign-domiciled” if (i) an individual has a permanent legal residence outside of the United States or its territories or (ii) an entity has its principal place of business or headquarters outside of the United States or its territories.

This requirement will apply to all electronic trademark filings, including via the Trademark Electronic Application System (“TEAS”) and includes all trademark applications, application related filings, and all registration related filings. Material filed in TTAB proceedings via the TTAB’s Electronic System for Trademark Trial and Appeals (ESTTA) will be subject to the same requirements. Paper filings will as well, although the USPTO expects to discontinue all paper trademark filings in October 2019.

With respect to Madrid Protocol trademark applications filed in the United States by foreign-domiciled applicants, the initial application filed with the International Bureau and transmitted by the International Bureau to the United States does not currently provide a mechanism for designating U.S. counsel. Accordingly, current practice will remain that Madrid Protocol applicants need not designate a U.S.-licensed attorney when filing an initial application with the USPTO. A U.S.-licensed attorney will be required for any subsequent office actions issued by the USPTO, however.

For currently pending applications at the USPTO, any office action responses filed after August 3, 2019, will need to be filed by a U.S.-licensed attorney, regardless of when the application was filed or when the office action issued. At the TTAB, the TTAB will suspend any proceeding involving a foreign-domiciled party not already represented by U.S.-licensed counsel and will issue an order requiring such representation. For registered marks, a U.S.-licensed attorney will need to file all materials relating to declarations of use and renewal.

To comply with this change, the USPTO will revise its electronic filing forms. The forms will now require that filers, i.e., licensed U.S. attorneys, provide:

  • Their name, mail address, and email address;
  • A statement declaring their active membership in good standing of a bar of the highest court of a U.S. state, commonwealth, or territory; and
  • Information identifying their bar membership (state, bar number if applicable, and year of admission) (which the USPTO will not make publicly available).

In the past, the USPTO has allowed some Canadian agents and attorneys to represent clients before the USPTO in trademark matters under 37 C.F.R. § 11.14(c). After August 3, 2019, however, Canadian patent agents will no longer be authorized to represent Canadian trademark applicants, registrants, and parties at the USPTO. And after August 3, 2019, the USPTO will only treat reciprocally recognized (see 37 C.F.R. § 11.14(f)) Canadian trademark attorneys and trademark agents as “additionally appointed” practitioners for Canadian applicants, registrants, and parties. Further, the USPTO will correspond only with the appointed U.S.-licensed attorneys for such Canadian applicants, registrants, and parties, and a U.S.-licensed attorney must file formal trademark papers with the USPTO.

According to the rule itself, it has been enacted to increase the integrity of the U.S. Trademark Register, as it “must accurately reflect marks that are actually in use in commerce in the U.S. for the goods/services identified in the registrations.” According to Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, this rule is needed due to the “significant rise in filings from China which [as of April 2018] represent nearly 10% of total new [trademark] applications.”[1]

For the past 33 years, annual trademark filings have increased each year between 6% and 8%.[2] For fiscal year 2017, however, Director Iancu identified a 12% increase in application filings. And in fiscal year 2018, as of April 2018, Director Iancu stated that U.S. trademark filings had increased more than 15% compared to the same period last year (marking an almost 7% increase from the expected number of filings).

Director Iancu specifically referenced filings from China in his comments.[3] According to the Director:

A big driver in the increase has been the significant rise in filings from China which now represent nearly 10% of total new applications. At the end of FY 2017, filings from China had increased by nearly 1,000% from FY 2013.

Director Iancu extrapolated that, if this rate of application filings from Chinese applicants were to continue, “filings from China by 2023 are expected to represent at least 32% of total U.S. trademark filings.”

Mary Boney Denison, Commissioner for Trademarks, has added that “A lot of [the trademark applications from China] seem to be not legitimate.”[4] If not legitimate, these applications create many problems at the U.S. Trademark Office and for other trademark applicants. Such issues include a lack of compliance with U.S. Trademark Office rules and regulations and the influx of applications creating burdens for both practitioners and Trademark Office personnel.[5]

The USPTO has also warned that individuals and entities outside of the United States have already begun to try to solicit and pay U.S.-licensed attorneys for the use of their attorney and bar identification information for U.S. trademark filings. Such arrangements would likely aid the unauthorized practice of law and would likely violate the USPTO’s rules of professional conduct, subjecting attorneys to discipline under the USPTO and state bar rules, and subjecting applicants to invalid filings.

The final rule is docketed as “Requirement of U.S. Licensed Attorney for Trademark Applicants and Registrants Not Domiciled in the United States” and is published at 84 FR 31498 (https://www.federalregister.gov/documents/2019/07/02/2019-14087/requirement-of-us-licensed-attorney-for-foreign-trademark-applicants-and-registrants).

Eric R. Moran is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and serves as Chair of the firm’s Trademark, Unfair Competition, Advertising Law & Copyright Practice Group. Mr. Moran has experience in all areas of intellectual property law, with particular emphases on litigating and counseling clients on patent, trademark, and domain name issues. moran@mbhb.com

[1] https://www.uspto.gov/about-us/news-updates/statement-director-andrei-iancu-committee-judiciary (Statement of Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, before the Committee on the Judiciary, United States Senate, “Oversight of the U.S. Patent and Trademark Office,” April 18, 2018.)

[2] https://www.uspto.gov/about-us/news-updates/statement-director-andrei-iancu-committee-judiciary (Director Iancu cited “only 4 years of negative growth during that period”).

[3] https://www.uspto.gov/about-us/news-updates/statement-director-andrei-iancu-committee-judiciary.

[4] https://www.uspto.gov/sites/default/files/documents/TPAC_Transcript_20171031.pdf?mod=article_inline (Remarks of Mary Boney Denison, Commissioner for Trademarks, at the Trademark Public Advisory Committee Meeting in Alexandria, Virginia, on October 31, 2017).

[5] See, e.g., https://www.uspto.gov/sites/default/files/documents/TPAC_Transcript_20171031.pdf?mod=article_inline (“China. We have five different issues going on with China. We have the unauthorized practice of law. We have the huge influx of filings. We have specimen issues, counterfeiting, bad faith filing.”)     

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