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U.S. Counsel Required for Foreign Applicants in Trademark Matters

June 10, 2021

While it has been almost two years since the United States Patent and Trademark Office (USPTO) changed its Rules of Practice to require representation by U.S. counsel, foreign applicants continue to file trademark applications without meeting this requirement.

Foreign trademark applicants, registrants, or parties to a proceeding before the USPTO should be reminded that according to “newly” amended 37 CFR 2, 7 and 11, they must be represented by an attorney who is an active member in good standing of the bar of the highest court of a U.S. State (including the District of Columbia and any Commonwealth or territory of the U.S.) and who is qualified under 37 CFR 11.14(a) to represent others before the USPTO in trademark matters.

The USPTO has stated that this requirement will (1) instill greater confidence in the public that U.S. registrations that issue to foreign applicants are not subject to invalidation for reasons such as improper signatures and use claims, and (2) enable the USPTO to more effectively use available mechanisms to enforce foreign applicant compliance  with statutory and regulatory requirements in trademark matters.

Even if this requirement did not exist, there would still be many benefits to using a U.S. attorney to file and prosecute trademark applications at the USPTO, such as - including the proper identification of the goods and/or services, accurately noting first use and first use in commerce dates, responding to Office Actions from the USPTO, rendering legal advice based on U.S. trademark law and practice when decisions have to be made, and identifying potential US legal issues outside the trademark arena that could arise.

If you are a foreign company or individual who wishes to register a trademark with the USPTO, not only is it a prudent idea to use an experienced U.S. attorney to prepare and prosecute your trademark application, it is now a requirement. The Nexsen Pruet IP group files hundreds of trademarks every year, and our trademark attorneys are available to assist you with the registration process today.

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