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ARTICLE · 26 JULY 2019

New USPTO Rules For Foreign Applicants

Beginning August 3, 2019, all foreign-domiciled trademark applicants and registrants will be required to retain licensed counsel in the United States to prosecute trademark applications

United StatesIntellectual Property

Beginning August 3, 2019, all foreign-domiciled trademark applicants and registrants will be required to retain licensed counsel in the United States to prosecute trademark applications, file post-registration maintenance documents, file submissions in Madrid applications, or respond to Trademark Trial and Appeal Board ("TTAB") proceedings.

A "foreign-domiciled" trademark applicant or registrant is:

  • (1) an individual with a permanent legal residence outside the United States or its territories, or
  • (2) an entity with its principal place of business (e.g. headquarters) outside the United States or its territories.   

These rule changes are in response to an increase in foreign applicants and registrants representing themselves pro se in trademark proceedings without sufficient familiarity with U.S. rules and laws, such as requirements associated with use in commerce and specimens. The new rules are designed to ensure that trademark registrations are issued

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