Trademark rule requires foreign applicants and registrants to have a U.S.-licensed attorney

Does this new rule affect me?

Once the new rule is effective:

  • Foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings, including Canadian trademark filers, must be represented at the United States Patent and Trademark Office (USPTO) by an attorney who is licensed to practice law in the United States. See more about foreign-domiciled trademark applicants, registrants, and parties.
  • U.S.-licensed attorneys representing trademark filers must provide all of the following:
    • Their name, postal address, and email address
    • A statement attesting to their active membership in good standing of a bar of the highest court of a U.S. state, commonwealth, or territory
    • Information concerning their bar membership (state, number if applicable, and year of admission).

      See more about U.S.-licensed attorneys.

  • Canadian patent agents will no longer be authorized to represent Canadian trademark applicants, registrants, or parties before the USPTO in trademark matters. See more about Canadian patent agents.
  • Canadian trademark attorneys and agents will continue, if eligible, to be recognized as additionally appointed practitioners who can represent their Canadian clients, although the USPTO will correspond only with the appointed U.S.-licensed attorney. See more about Canadian trademark attorneys and agents.

See the final rule.

When is this new rule coming?

This new rule becomes effective on August 3, 2019.

What are the goals of this new rule?

The new rule is intended to:

  • Increase USPTO customer compliance with U.S. trademark law and USPTO regulations.
  • Improve the accuracy of trademark submissions to the USPTO.
  • Safeguard the integrity of the U.S. trademark register. 

Why is this rule being put in place?

Businesses rely on the U.S. trademark register to make important legal decisions about their brands. In order to maintain the accuracy and integrity of the register, for the benefit of all its users, the USPTO must have the appropriate tools to enforce compliance by all applicants and registrants. We discovered an increasing number of foreign trademark applicants, registrants, and parties are filing inaccurate and possibly fraudulent submissions with the USPTO that do not comply with U.S. trademark law or the USPTO’s rules. Often, these submissions are made with the assistance of foreign individuals or entities not authorized to represent applicants at the USPTO.

Many countries already require local attorneys to represent applicants. A significant number of trademark offices around the world require foreign-domiciled applicants and registrants to obtain local counsel as a condition for filing papers with those trademark offices.

This new rule affects me. What should I do?

Questions?

Email TMpolicy@uspto.gov with any questions.