Trademark Rule Change Requires Foreign Parties to Have U.S. Counsel

The U.S. Patent and Trademark Office (“PTO”) recently issued a new rule which will require all foreign domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to be represented by a U.S. licensed attorney. The rule takes effect on August 3, 2019. This rule was enacted to combat an increasing number of inaccurate and potentially fraudulent submissions from foreign parties acting without U.S. counsel and is intended to increase compliance with U.S. trademark laws and regulations, and improve the accuracy of trademark submissions. With respect to applications filed under Section 66 of the Trademark Act under the Madrid Protocol, currently there is no way to designate a separate U.S. attorney on the International Bureau forms. However, the requirement for a U.S. licensed attorney applies for all provisional refusals, i.e., office actions, issued by the PTO.

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