United States Patent and Trademark Office Rule Change Effective August 3, 2019
The U.S. Patent and Trademark Office (USPTO) just adopted a rule that will, on and after August 3, 2019, require foreign-domiciled trademark applicants, registrants, and parties to use a U.S.-licensed attorney to file any and all trademark-related submissions with the USPTO, other than applications using the Madrid Protocol under Trademark Act Section 66(a). The USPTO will issue a requirement for a U.S.-licensed attorney when it issues a provisional refusal (office action) in a Section 66(a) application.
A “foreign-domiciled” trademark applicant, registrant, or party is either or both:
- An individual with a permanent legal residence outside the United States or its territories;
- An entity with its principal place of business (headquarters) outside the United States or its territories.
This new rule applies to all submissions to the USPTO on and after August 3, regardless of whether the application was previously being prosecuted by a foreign-domiciled applicant or registrant. For matters pending before the USPTO’s Trademark Trial and Appeal Board, when foreign-domiciled parties are not represented by a U.S.-licensed attorney, the Board will suspend the proceeding and issue an order requiring the party to have a U.S.-licensed attorney represent it in the proceeding.
Ice Miller has experienced trademark practitioners ready to assist you or your clients with USPTO matters. Please contact Ice Miller’s
IP Group with any questions about this new rule and if you require assistance in the United States with trademark matters. We look forward to serving you.
This publication is intended for general information purposes only and does not and is not intended to constitute legal advice. The reader should consult with legal counsel to determine how laws or decisions discussed herein apply to the reader’s specific circumstances.