Over the past few years, there has been a significant change in how businesses and individuals located outside the United States apply for and maintain U.S. trademarks. Since 2019, the United States Patent and Trademark Office (USPTO) requires all foreign domiciled trademark applicants and owners, including those in Canada, to be represented by a U.S. licensed attorney in all trademark matters. 37 CFR § 2.11. This means that if a trademark owner is an entity or individual with a legal residence or main place of business outside the United States, they must use a U.S. licensed attorney to handle all trademark submissions to the USPTO. This includes new applications, ongoing filings, registration maintenance, or dispute proceedings before the Trademark Trial and Appeal Board (TTAB). If a foreign-domiciled applicant files a submission without a qualified U.S. attorney, the USPTO will issue an Office Action requiring the appointment of one. Failure to comply within the specified timeframe (usually three months, with a possible extension) will result in the abandonment of the application or termination of the proceedings.

Prior to this rule change, foreign entities or individuals could submit trademark filings on their own or with the help of foreign counsel. Now, any entity or individual based outside the United States must be represented by a U.S. attorney, and every official trademark matter must be prepared, signed and submitted by an attorney who is licensed to practice law in the U.S. This requirement applies whether you are filing a new application, responding to an Office Action, maintaining an existing registration or engaging in proceedings before the TTAB. If you are applying for U.S. protection through the Madrid Protocol, an international treaty which streamlines the trademark registration process in more than 120 countries, you don’t need U.S. counsel to file the application, but as soon as the USPTO raises any concerns with the application, a U.S. licensed attorney will need to be appointed to respond to any issues raised.

The rationale behind the rule is to address the rise in inaccurate and potentially fraudulent submissions from foreign applicants and improve the accuracy of filings with the USPTO. This rule was implemented at the same time as the “home address” rule, which requires all trademark owners to provide and keep current their domicile address in trademark filings. The USPTO implemented the rule so that it can determine the identity of the filer and whether or not the filer must be represented by a U.S. licensed attorney. Read our Insight for more about the home address rule and how it also raises privacy concerns.

If you currently hold an existing U.S. registration but are foreign-domiciled, or if you are a foreign practitioner, you should consult with U.S. counsel for any future filings with the USPTO to avoid refusals, delays or loss of rights in the mark. Lutzker & Lutzker can work with you to help ensure your U.S. trademark rights are protected under the amended USPTO regulations. Contact Jeannette Carmadella for more information.