Effective August 3, 2019, the U.S. Patent and Trademark Office (USPTO) will require all foreign-domiciled trademark applicants, registrants, and parties to a trademark proceeding to be represented by an attorney who is licensed to practice law in the United States. This requirement will apply to any entity with a principal place of business outside of the United States and its territories and any individual with a permanent legal residence outside of the United States and its territories.

This new rule is one of the USPTO’s responses to an increasing number of inaccurate, overbroad, and in some instances, possibly fraudulent trademark submissions, some of which originate abroad.  The goal of this rule (and other USPTO efforts not focused solely on foreign trademark owners) is to help improve the accuracy of the U.S. trademark register and increase compliance with U.S. trademark law.

According to the USPTO, “increasing numbers of foreign applicants are likely receiving inaccurate or no information about the legal requirements for trademark registration in the U.S., such as the standards for use of a mark in commerce, who can properly aver to matters and sign for the mark owner, or even who the true owner of the mark is under U.S. law.” As further explained by Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, “Businesses rely on the U.S. trademark register to make important legal decisions about their brands. In order to maintain the accuracy and integrity of the register, for the benefit of all its users, the USPTO must have the appropriate tools to enforce compliance by all applicants and registrants. This rule is a significant step in combatting fraudulent submissions.”

Currently pending applications and submissions filed by someone other than a U.S.- licensed attorney will be considered by the USPTO as-is. However, applicants and registrants may not respond after August 3, 2019 to USPTO office actions without first appointing U.S. counsel. Further, for ongoing TTAB proceedings where a foreign-domiciled party is not currently represented by a U.S.-licensed attorney, the TTAB will suspend the proceeding and require appointment of a U.S. -licensed attorney.

Further guidance can be found here.

Print:
Email this postTweet this postLike this postShare this post on LinkedIn
Photo of Anne Elise Herold Li Anne Elise Herold Li
Read more about Anne Elise Herold Li
Photo of Deirdre Long Absolonne Deirdre Long Absolonne

Nonprofit organizations and brand owners trust Deirdre Long Absolonne as outside general counsel dedicated to advancing their mission while mitigating risk. Deirdre drafts and negotiates key contracts and advises on corporate governance, intellectual property, compliance, policy, and other matters, teaming with clients and

…

Nonprofit organizations and brand owners trust Deirdre Long Absolonne as outside general counsel dedicated to advancing their mission while mitigating risk. Deirdre drafts and negotiates key contracts and advises on corporate governance, intellectual property, compliance, policy, and other matters, teaming with clients and colleagues to provide holistic support.

Deirdre represents charitable, religious, and social service organizations; foundations; health care and educational institutions; and other tax-exempt entities. She has significant experience in intellectual property matters, including trademark registrations, copyright issues, trademark licensing, and the enforcement of trademark rights, particularly enforcement challenges and licensing opportunities that arise from famous marks. Her experience includes trademark matters for clients across industries, including financial services, medical devices, consumer products, fashion, and technology. She also counsels clients with respect to technology-related issues and transactions.

Deirdre is a member of the New York City Bar Association Nonprofit Organizations Committee and served on Crowell’s Diversity Council from 2019 – 2023.

Read more about Deirdre Long Absolonne
Show more Show less
Photo of Michelle Chipetine Michelle Chipetine

Michelle Chipetine is a counsel in Crowell & Moring’s New York office and a member of the firm’s Intellectual Property and Health Care groups. Michelle’s practice focuses on patent litigation and representing health care entities and not-for-profit corporations on a wide range of…

Michelle Chipetine is a counsel in Crowell & Moring’s New York office and a member of the firm’s Intellectual Property and Health Care groups. Michelle’s practice focuses on patent litigation and representing health care entities and not-for-profit corporations on a wide range of transactional, corporate, and regulatory matters. Michelle also maintains an active pro bono practice.

Michelle graduated cum laude from Fordham University School of Law, where she was a legal writing and torts teaching assistant and actively involved with Fordham’s Neuroscience and Law Center. During law school, Michelle worked for Mount Sinai Innovation Partners, where she facilitated the transfer and commercialization of technologies developed by Mount Sinai researchers. Michelle also studied neuroscience at Vassar College, where she graduated cum laude.

Read more about Michelle Chipetine
Show more Show less
Related Posts
What to Know about Patent and Trademark Procedures in Light of the Coronavirus Outbreak
April 1, 2020
Cassidy, Whitehouse Propose Customs Modernization Act to Enhance CBP Authority, Strengthen Enforcement
December 20, 2023
CIT issues Preliminary Injunction Temporarily Restraining Liquidation of Section 301 Import Entries
July 9, 2021