The New USPTO Rule: What Do Foreign Trademark Applicants Need to Do With Their Existing Trademarks?
What Is the New USPTO Rule?Earlier this summer, the USPTO announced a new rule requiring that all foreign-domiciled trademark applicants and registrants must be represented by an attorney with a U.S. bar license. This rule applies to any applicant “whose permanent legal residence or principal place of business is outside the United States.”
In addition, all attorneys filing trademarks on behalf of clients must now enter the state in which they’re licensed, their date of bar admission, and their state bar number (if applicable in that state). They must also affirm their good standing as an attorney licensed by a U.S. state bar.
Screenshot from the USPTO TEAS Plus trademark filing form.
If I Already Filed an Application Before the New Rule, Am I Affected?While I knew this would stop foreign companies and businesspeople from filing trademark applications on their own behalf, I didn’t really think about how it might affect foreign applicants who had filed their applications before the rule took effect. Unfortunately, most of those applicants, despite filing their application before the rule took effect, will have to comply with the new requirement.
If you are an applicant based in a foreign country who has a pending trademark application with the USPTO, you will need to hire a U.S.-licensed attorney to represent you if the application requires any additional filings.
This means that you will need to hire a U.S.-licensed attorney if:
- ●Your application receives any office action, including minor office actions like a disclaimer requirement or a change to the description of the mark. The USPTO issues office actions for the majority of US trademark applications. Even examiner’s amendments made by a USPTO examiner with your consent require a U.S. attorney.
- ●You filed under a 1(b) intent-to-use basis, or under a 44(d) foreign filing basis. Both of these bases require that the applicant submit an additional filing before reaching registration — either a statement of use for 1(b) or a foreign trademark certificate for 44(d). These additional filings must be filed by a U.S. attorney.
- ●You want to make any amendment to the application, including the goods/services identifications or any information about the owner of the trademark. This is true even if your trademark has already reached registration.
What If I Already Own a Registered U.S. Trademark?Unfortunately, even if you managed to fully register your trademark before the new rule was implemented, you will still need to hire a U.S.-licensed attorney to file your six-year maintenance filing and your ten-year renewal filing.
Multiple foreign entrepreneurs have already reached out to me with urgent requests for renewal filings because they waited until the last minute, thinking they would just file it themselves a few days before their renewal deadline. Don’t let the new requirement catch you by surprise!
How Do I Find an Inexpensive U.S.-Licensed Trademark Attorney to Take Over My Trademark?You can try Google. That’s how most of my clients find me. Or, since you’re already here, you can hire my firm, JPG Legal! We offer low, flat-fee pricing to take over a pending USPTO trademark application and file an office action response or to renew a USPTO-registered trademark.
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Trademark Registration Packages.
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