Skip to main content

Valerie Oyakhilome, Paralegal

August 30, 2019

On August 3rd, 2019, the United States Patent and Trademark Office (USPTO) took unprecedented action by implementing a new rule that directly impacts the meaning of compliance in the application process for both current and prospective trademark owners. This alert serves to inform you of the new U.S. counsel requirement, a rule that marks the beginning of a new era of accountability in U.S. intellectual property law.

I. Foreign Applicants U.S. Counsel Requirement

Under the new amendment to the Federal Trademark regulations at 37 C.F.R. § 2.11, foreign-domiciled applicants, registrants, or parties of a trademark application are now required to designate a U.S.-licensed attorney to represent them in the trademark filing.

Under applicable statute, the term “Domicile” is defined as “the permanent legal place of residence of a natural person or the principal place of business of a juristic entity.” (37 C.F.R. § 2.2(o)). Business entities with a principal place of business located outside the U.S. or its territories will also be subject to the rule. “Principal place of business” is defined as the location of an entity’s headquarters and is usually the center where other locations, if any, are controlled. The entity’s senior executives or officers would often be present to direct and control the entity’s activities at this location. (37 C.F.R. §2.2(p)). Domicile, in both instances, will be determined by physical address and does not include a post-office box.

While many other countries have already implemented a similar requirement, the USPTO has established the new rule to serve as a response to the recent rise in suspicious specimens of use and false or inaccurate claims of use, as well as a strategy to combat illicit practices of the law. The U.S. counsel requirement is intended to increase accountability, accuracy, and compliance within the U.S. IP regulatory framework, while further preserving the integrity of the federal trademark register.

The new rule is not only accompanied by IT enhancements that transform the Trademark Electronic Application System (TEAS) Plus application filing process, but it also applies to both the paper submissions and submissions made using the Trademark Trial and Appeal Board’s (TTAB) Electronic System for Trademark Trial and Appeals (ESTTA).

The USPTO has stated that this recent change is one of many to come, as within the next nine months applicants will also be required to have a account for login and proof of identity in order to file trademark documents with the USPTO. Additionally, the USPTO has outlined a mult-istep strategy involving future initiatives, which you can read here.

II. How Does This Impact You?

  • Foreign Domiciled-New Trademark Applicants

All applicants will be required to provide and keep current the address of their domicile. The new requirement specifically applies to applicants, registrants or parties to a trademark proceeding whose “domicile” is not located within the U.S. or its territories. Those who fall under this category will be required to designate a U.S. attorney in order to submit their trademark application. The appointed attorney will then be responsible for submitting the original application in order for the filing to be considered complete. If you do not designate an attorney when filing a new application, the USPTO will issue an Office Action with a 6-month deadline for you to obtain counsel. Obtaining counsel within that time frame will ensure that you maintain your original application filing date.

  • Foreign Domiciled-Existing Trademark Applicants (applications filed before August 3rd)

While the ruling will have immediate effects on new applications or proceedings filed on or after August 3, 2019, foreign domiciled applicants with previously filed applications will still be subject to the U.S. counsel requirement. Foreign individuals or entities who own U.S. trademark registrations or have pending applications filed or issued prior to August 3rd, will need to designate U.S. counsel before the next filing. This can be done by submitting a Power of Attorney with the next filing (for example, an office action, statement of use, application for renewal of registration, etc.). Those who own several trademark applications can file a single Power of Attorney for all of the registrations and applications that they own, if they so choose. The new rule also effects TTAB disputes as foreign domiciled parties to the dispute will be required to obtain counsel or otherwise have their proceeding suspended.

  • U.S. Domiciled-New and Existing Applicants

New applicants will be required to provide, and keep current, the address of their domicile. The new rule affects new and current filings. The USPTO examiner or post-registration specialist may issue an Office Action for further documentation to establish that the U.S. street address is actually the applicant’s domicile.

  • U.S. Attorneys

When representing individuals in USPTO trademark matters, U.S.-licensed attorneys will be required to confirm that they are an active member in good standing of the Bar in any of the 50 states of the U.S. and the District of Columbia, and any Commonwealth/territory of the U.S. Attorneys must also provide the USPTO with additional information including the name of the State where they are active and in good standing, the date they were admitted to the Bar, and their Bar license number. Additional information can be found here.

Remember…Compliance is Crucial and Quality is Key

Dunnington, Bartholow and Miller LLP is committed to ensuring the integrity of Trademark applications for both our domestic and foreign domiciled clients. Our dedicated Intellectual Property department is well-equipped to adapt to the ever-changing regulatory landscape. We will continue to provide our clients with the best service so that compliance continues to be crucial and quality remains key.


Print Friendly, PDF & Email