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On August 3, 2019, the United States Patent and Trademark Office’s (USPTO) amended rules of the Code of Federal Regulations (CFR) takes effect.  This new rule includes parts 2, 7, and 11 of title 37, and is a requirement that foreign applicants, registrants or parties to a trademark proceeding be represented by an attorney who is an active member in good standing of the bar of the highest court of a state in the U.S.

When the USPTO proposed the new rule in February 2019,  it stated that the new requirement is similar to that of other jurisdictions (Brazil, Chile, the People’s Republic of China, the European Union’s Intellectual Property Office, Israel, Japan, Jordan, the Republic of Korea, Morocco, and South Africa), which also have requirements based on domicile.

The USPTO has amended the Rules of Practice in Trademark Cases, the Rules of Practice in Filings Pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol), and the rules regarding Representation of Others Before the United States Patent and Trademark Office, requiring that a trademark application is to be filed with a U.S. attorney by applicants domiciled in other jurisdictions.

There are two goals of this new rule:

  1. Instill greater confidence in the public that the U.S. trademark registrations issued to foreign applicants are not subject to invalidation for reasons such as improper signatures and use claims.
  2. Enable the USPTO to more effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters.

The enactment is in response to the USPTO experiencing a significant surge in foreign filings in recent years.  The office continues to address instances of unauthorized practice of law (UPL) by foreign parties who engage in tactics designed to circumvent USPTO rules or filing inaccurate and possibly fraudulent submissions that violate the Trademark Act and/or the USPTO’s rules.

The lack of representation by a qualified U.S. attorney raises legitimate concerns that affected applications and any resulting registrations are potentially invalid, and thus negatively impacts the integrity of the trademark register.  By ensuring that foreign applicants, registrants, and parties are assisted only by authorized practitioners who are subject to the USPTO’s disciplinary rules, it is less likely that they will be signed by an unauthorized party or contain statements that are inaccurate.  Therefore, a reduction in costs and actions associated with:

  • investigating the actual use of a mark;
  • initiating proceedings to cancel a registration or oppose an application;
  • engaging in civil litigation to resolve a dispute
  • changing business plans to avoid the use of a chosen mark.

This will eventually alleviate the burden on the trademark examining operation.

The USPTO’s role is to protect consumers, as well as provide important benefits to US commerce by allowing businesses to strengthen and safeguard their brands.  An accurate and reliable trademark register helps avoid needless costs and burdens.  The USPTO anticipates that implementation of this rule will have the benefit of generally reducing costs to applicants, registrants, and other parties and providing greater value to consumers who rely on registered marks.

For more information please contact the attorneys at Ference & Associates at +1- 412-741-8400.