U.S. Licensed Attorneys Must Represent Foreign Domiciled Trademark Applicants

As of August 3, 2019, all trademark applicants that are foreign domiciled must have a U.S. licensed attorney file its trademark applications at the United States Patent and Trademark Office (“USPTO”), and act as its representative at the Trademark Trial and Appeal Board (“TTAB” or “Board”). This rule also applies to Canadian trademark filers, attorneys and agents. Many countries around the world have a similar rule, and the USPTO has decided to follow suit for several reasons. It is in the public interest to maintain a Trademark Register that accurately reflects those marks that are in use in U.S. commerce for the goods and services identified in the registrations. An accurate Trademark Register will not only protect consumers, but will allow U.S. businesses to grow their companies while being able to invest in their brands with the security that the USPTO maintains and monitors the integrity of the Trademark Register. Lastly, prospective applicants rely on the Trademark Register to provide critical information on trademark clearance.

A frequently asked question in my practice is what does it mean to have a foreign domicile? An individual or an entity can have a foreign domicile. This means that such domicile is not located in the U.S. or its territories. An individual’s domicile is the place a person lives or resides, and the individual views the domicile as its principal home. An entity also maintains a domicile and that is where it has a principal place of business. A principal place of business is where the entity’s officers or senior management directs and controls the operating activities of the company. Applicants and Registrants must maintain current addresses for their respective domiciles.

The USPTO will be proactive if they discover a domicile address outside the U.S. without representation by a licensed U.S. attorney, and the Trademark Office will issue an Office Action. This applies to post registration as well. The Office Action will require the applicant or registrant to appoint a U.S. attorney. It should be noted that currently, P.O. Boxes as domicile addresses are generally not acceptable any longer. Although, if there are multiple owners and one owner has a U.S. domicile then a U.S. licensed attorney is not required. Foreign domiciled applicants who submit an application based on Section 66(a) (a Madrid application) must also appoint a U.S. licensed attorney. Applications filed through the Madrid Protocol are submitted with the International Bureau of the World Intellectual Property Office, and then transmitted to the USPTO. However, the current Madrid application does not have a provision to designate a U.S. attorney, therefore until it does, the USPTO will not enforce the appointment of U.S. trademark counsel prior to publication. But, if the Examining Attorney issues an office action in a 66(a) application, then the Examining Attorney will require an appointment of a U.S. attorney.

The USPTO enacted this rule to ensure compliance with U.S. trademark laws. Recently, there was an increase in the number of foreign domiciled applicants and registrants that were filing inaccurate and possibly fraudulent applications and documents with the USPTO. Such filings were damaging the integrity of the U.S. Trademark Register. The USPTO was also concerned about the unauthorized practice of law, and in particular the submission of digitally altered specimens. Although, the Trademark Office had a pilot program enacted to help identify fraudulent specimens, likely the pilot program alone was insufficient to combat this problem.

This new rule requiring U.S. licensed attorneys to represent foreign domiciled applicants and registrants will also benefit those foreign domiciled applicants and registrants. Receiving trademark counsel from U.S. trademark attorneys will decrease the likelihood that an application can be invalidated for incorrectly naming the trademark owner or the first use date of the trademark. U.S. trademark laws are complex, and foreign attorneys often misinterpret the rules for trademark ownership and for determining the first use date in commerce. Incorrectly identifying the owner or first use date of a mark will expose the application to invalidation or the registration to cancellation. If you or your company are domiciled outside of the United States, and are seeking to file a trademark application in the U.S. or require other representation at the USPTO, please feel free to contact the firm for a courtesy consultation.