New USPTO Trademark Rule requires foreign entities to use a U.S. Attorney

Published 19 September 2019 by Giroux Amburn P.C.

A U.S. attorney must represent foreign based individuals or entities applying for or maintaining a U.S. trademark.  The requirement extends to all applicants, registrants, or parties to a trademark proceeding not domiciled in the United States or its territories.  According to the United States Patent and Trademark Office’s (USPTO) website the new requirement is intended to increase customer compliance, improve the accuracy of USPTO submissions, and safeguard the integrity of the U.S. trademark register.   

This New Rule applies to: 

  1. Individuals or entities that do not have a permanent legal place of residence in the U.S.
  2. All foreign applicants, registrants, or parties to a proceeding.
  3. All applications, registrations or proceedings pending as of August 3, 2019. 

If an applicant does not comply with the new rule, they will receive an office action and are allowed a limited opportunity to retain U.S. counsel.  An applicant or registrant must show evidence of U.S. attorney retention to avoid abandonment of any pending trademark application or registration.  Non-U.S. applicants and registrants can comply with the rule by filing a power of attorney designating a qualified U.S. attorney. A power of attorney can identify multiple applications or registrations.  Lastly, the assigned attorney must be a member in good standing of at least one state in the U.S.  The new rule is codified at 37 CFR § 2.11(a).

To avoid delays or potential abandonment it is essential to consult with U.S. counsel to ensure compliance with the new rule requirements.

We are here to help

Giroux Amburn P.C. attorneys are qualified, experienced and well equipped to help clients obtain and maintain U.S. trademark registrations.  Our services include managing trademarks and related proceeding with a docketing system that automatically receives daily updates from the USPTO.  We will extend a discounted rate to IR Global members for U.S. trademark applications, maintenance or other related matters such as trademark prosecution or opposition/cancellation proceedings.

We are also experienced IP litigators.  Recently, we took to trial and won a trademark infringement dispute between Bombardier Recreational Products Inc. and Jaguar Land Rover Limited regarding the Defender brand. 

“We strive to not only meet, but exceed your expectations for quality IP services,” said Dean Amburn, Giroux Amburn’s director of IP legal services.