Caught on our radar
in the US
In early July 2019, the United States Patent and Trademark Office (USPTO) announced a new rule requiring all foreign-domiciled trademark applicants, registrants and parties to Trademark Trial and Appeal Board (TTAB) proceedings to be represented by an attorney who is licensed to practice law in the United States. The new rule takes effect on August 3, 2019.
This rule applies to all, both new and current, filings for trademark registration. But, if a pending application does not require any additional measures after the rule was implemented on August 3, 2019, the application will be able to proceed to registration without the engagement of a US attorney. However, if the USPTO issues an Office Action, the response must be filed by a US attorney. Similarly, any statement of use due after August 3, 2019 must also be filed by a US attorney. Accordingly, in most cases, even filings made prior to the new rule will need to involve a US attorney.
Representation of a US licensed attorney will also be required by foreign parties in the event of renewals or otherwise maintaining a trademark already registered in the United States.
Foreign trademark filers should promptly engage experienced IP attorneys licensed to practice law in the US, especially if any trademark applications are pending before the USPTO or if the applicant is a party to TTAB proceedings.
Click here to read the full blogpost by Erin Klug of Ally Law member firm Varnum LLP.