New Rule Requires U.S. Counsel to Represent Foreign Trademark Applicants and Registrants

The U.S. Patent and Trademark Office (USPTO) issued a new rule that requires foreign trademark applicants and registrants to be represented by an attorney licensed in the United States. Under the U.S. counsel rule, codified at 37 C.F.R. § 2.11(a), any trademark applicant or registrant domiciled outside of the United States must retain U.S. counsel to file any document before the USPTO.  This rule change is an effort to combat the unauthorized practice of law as well as the use of fake or suspicious specimens. The rule change was prompted by the USPTO’s examination of foreign trademark applications. In some cases, foreign applicants filed hundreds of trademark applications in their own names.  After reviewing those applications, the USPTO discovered that those applications were, in fact, filed by foreign practitioners.

This is a problem because foreign attorneys are not authorized to practice before the USPTO. The USPTO’s investigation further revealed a link between the unauthorized practice of law and the use of fake or suspicious specimens. This is an important issue because filing a valid specimen showing use of a mark in commerce is required to obtain a trademark registration. The use of bogus specimens has allowed applicants to be granted trademark registrations that they are not legally entitled to receive.

This rule change should help those with valid trademark rights protect their rights in the United States. In our practice, we have encountered foreign applicants, particularly Chinese companies, who have applied to register marks for dozens of products where it is doubtful that the applicant has actually used the mark in commerce. Those marks can be cited as a reason to deny registration to a legitimate user of a similar mark. Once a trademark is registered, the only way to remove it from the register is through a petition to cancel, which can greatly increase the cost of obtaining a trademark registration. Since the USPTO has limited authority to sanction foreign practitioners or companies for filing phony specimens, the rule change should result in greater care in registering marks that are validly used in commerce.

We have experience in representing companies and individuals with their trademark matters in the United States. We have also worked with legal counsel throughout the world in protecting international trademark rights.  We would be glad to represent you in registering your trademark in the United States or submitting any of the maintenance filings needed to keep your registration active in the United States. Please contact us if we can be of assistance.

This article is provided for general information and should not be relied upon as legal advice for a specific situation. If you are in need of specific advice or legal representation, please do not hesitate to contact us.

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