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Patent and Trademark Office Proposes Rule Requiring Trademark Applicants to Use U.S.-Licensed Attorneys

On February 15, 2019, the United States Patent and Trademark Office (the “Office”) published a proposed rule that would require a U.S.-licensed attorney to represent a foreign applicant or registrant before the Office in trademark matters. The proposed rule would amend the Rules of Practice in Trademark Cases and the rules regarding Representation of Others Before the United States Patent and Trademark Office, and is intended to increase confidence in the public that U.S. trademark registrations issued to foreign applicants are not subject to invalidation, and enable the Office to more effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements.

In recent years, there has been an uptick in the number of instances in which trademark applicants and registrants are either represented by foreign parties who are not authorized to represent others before the Office, or are not represented at all. As a result, it is likely that foreign applicants are receiving inaccurate information—if any at all—regarding the legal requirements for registration in the United States, and that potentially invalid applications are submitted to the Office and subsequently passed to registration. For example, the Office reports that many foreign applicants have filed applications alleging use of a mark in commerce, but that the applicants’ requisite statements of use are, frequently, fraudulent and fail to comply with statutory and regulatory requirements.

The Office expects that the proposed rule will benefit both the general public and trademark applicants and registrants alike. The public relies on the trademark register to determine whether a chosen mark is available for use or registration, and an accurate and reliable trademark register will help to avoid unnecessary costs related to investigation of actual use of a mark, proceedings to cancel a registration or oppose an application, and changes to business plans regarding a mark. Likewise, for applicants and registrants, ensuring the integrity of a trademark application or registered trademark helps to minimize the likelihood that a mark will be invalidated.

An applicant or registrant would be subject to the proposed rule when the applicant or registrant’s domicile or principal place of business is not located within the United States or its territories. In order for an attorney to be qualified to represent an applicant or registrant in trademark matters before the USPTO, the attorney must be licensed by the highest court of any U.S. state, the District of Columbia, or any U.S. territory, and must be in good standing in the attorney’s jurisdiction of licensure.

It is worth noting that the Office may be forced to consider a waiver of the requirement that an applicant be represented by U.S. counsel for applications filed under the Madrid System, which permits an applicant to file a trademark application in the applicant’s home country, and then designate additional countries in which the applicant desires protection.

The proposed rule would be similar to requirements in several other trademark registration systems, including those of Brazil, China, and the European Union. The public is invited to provide comments on the proposed rule before the March 18, 2019, deadline.

Patrick M. Kennedy

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