Filing For a Trademark in the United States? How This New Trademark Rule Affects You

In early August of 2019, the United States Patent and Trademark Office passed a new rule restricting applications for US trademarks by foreign applicants and registrants. If your trademark application was submitted prior to August 3, 2019 and is approved, this law does not affect you. If your application requires further action or is filed after August 3, 2019, you will need a US-licensed attorney.

New Requirements for Foreign Applicants

This new law affects all foreign-domiciled trademark registrants, parties, and applicants. Anyone with a permanent legal residence or principal place of business outside the United States is affected. Trademark applicants must be represented by a US attorney. When they file on behalf of a foreign applicant, the US attorney must provide:

  • Their name, email address, and postal address
  • Statement regarding their membership of a bar of a United States state or territory
  • Their bar membership state, number, and year of admission

What About Canadian Applicants?

In the past, Canadian patent agents were able to represent Canadian applicants. This is no longer the case as of August 3, 2019. Canadian trademark agents can still work with Canadian trademark applicants, but applicants must also be represented by a US-licensed attorney. The Patent and Trademark Office will only communicate with the US-licensed attorney.

What This Rule Accomplishes

The United States Patent and Trademark Office hopes to achieve several goals with this new rule. They hope to make it easier to enforce compliance regulations by requiring the use of a US attorney, as both fraudulent and inaccurate applications have become more common in recent years. These applications are not in line with US trademark law and can prevent businesses from using language or images they might otherwise be able to use. Additionally, these fraudulent or incorrectly-filed applications lead to long wait times for applicants and long application review periods. With the implementation of this rule, the USPTO wants to achieve greater compliance with US trademark law, yield more accurate trademark applications, and protect the US trademark register.

How This Affects You

Much depends on your initial application date. If your first application or application-related submission was filed before August 3, 2019, your submission may be accepted without the approval of a US attorney. However, if your application requires further information or revision, you do need an attorney. You must also have a US attorney prior to your next filing date. 

Protect your company with the assistance of a business lawyer. Whether you need help with contracts, trademark filings, or employment documents, we’re here for you. Call the Law Offices of Tyler Q. Dahl at 916-545-2790 to take the first step.

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