Kevin Soucek

Jamie Pingor

Effective August 3, 2019, the United States Patent and Trademark Office (USPTO) will require all applicants, registrants, or parties (including Canadian attorneys) not domiciled in the United States to be represented by a U.S. attorney before the USPTO.  This new requirement is in response to a recent surge in filings from foreign applicants, in an effort to combat the growing problem of foreign individuals, entities, and applicants from failing to comply with U.S. law.

In the past, Canadian attorneys could represent clients before the USPTO without having to be represented by a U.S. attorney.  In addition to other foreign applicants and entities, this new rule now also applies to Canadian applicants, registrants, or parties.  Nevertheless, Canadian trademark attorneys and agents will continue, if eligible, to be recognized as additionally appointed practitioners who can represent their Canadian clients, although the USPTO will correspond only with the appointed U.S.-licensed attorney.

Once implemented, any foreign applicants who file a trademark application with a filing basis under section 1, section 44 or section 66(a) will be informed in an Office Action that an appointment of a qualified U.S. attorney is required.  The applicant will have the usual period of six months to respond to an Office Action, and failure to comply will result in abandonment of the application.

The USPTO anticipates that the requirement will have the benefit of generally reducing costs to applicants, registrants, or other parties. It will also provide greater value to consumers who rely on registered marks. Further, the USPTO expects that the requirement will not only aid the USPTO in its efforts to improve and preserve the integrity of the U.S. trademark register, but will also ensure that foreign applicants, registrants, or other parties are assisted only by authorized practitioners who are subject to the USPTO’s disciplinary rules.

Walter | Haverfield’s Intellectual Property group regularly counsels foreign associates worldwide in extensively handling various trademark matters before the USPTO. Please contact us should you need assistance.

Kevin Soucek is an attorney at Walter | Haverfield who focuses his practice on intellectual property. He can be reached at ksoucek@walterhav.com or at 216-619-7885.

Jamie Pingor is a partner at Walter | Haverfield and chair of the Intellectual Property team. He can be reached at jpingor@walterhav.com or at 216-928-2984.