Foreign Applicants Must Retain U.S. Counsel

The United States Patent and Trademark Office (USPTO) recently enacted a rule change that will have a significant impact on trademark filers, especially applicants outside the United States. Effective August 3, foreign-domiciled trademark applicants must be represented at the USPTO by an attorney who is licensed to practice law in the United States. This applies to both prosecution matters and adversarial matters before the Trademark Trial and Appeal Board (TTAB).

The new rule was enacted following an increase in foreign applications with inaccurate and possibly fraudulent submissions. The goal of the rule change is to improve the accuracy of trademark submissions to the USPTO and increase compliance with U.S. trademark law and USPTO regulations. The USPTO also justified the rule change by pointing out that many countries already require local attorneys to represent trademark applicants.