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USPTO Sets New Rule for Foreign Companies in Trademark Cases

Published on

July 12, 2019

A new rule from the U.S. Patent and Trademark Office will require all foreign-based companies and individuals who make trademark filings with the USPTO to be represented by an attorney licensed to practice in the United States.

This new rule will apply to all trademark-related filings, including:

  • All original applications for registration and all filings connected with the prosecution of the application
  • All renewal and other maintenance filings required to maintain an existing registration
  • All proceedings before the Trademark Trial and Appeal Board

The USPTO announced the rule change earlier this month in a news release, and the rule goes into effect August 3.

The rule is a step to help prevent against fraudulent submissions, USPTO Director Andrei Iancu said.

The new requirement applies to all trademark applicants, registrants, and parties whose permanent legal residence or principal place of business is outside the United States. These applicants, registrants, and parties are required to have a U.S.-licensed attorney represent them at the USPTO in all trademark matters.

Other countries have long had similar rules, USPTO Commissioner for Trademarks Mary Boney Denison said in the release.

Also included in the new rule is a requirement that U.S.-licensed attorneys representing any company – foreign or domestic – in trademark proceedings must confirm they are an active member in good standing of their state’s bar and to provide their bar membership information.

Barley Snyder trademark attorneys have successfully represented foreign companies in USPTO proceedings for many years. If you are a foreign-based company with questions about a USPTO hearing, please contact me or any member of the Barley Snyder Intellectual Property Practice Group

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