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

Does this rule affect me?

  • Foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings, including Canadian trademark filers, must appoint and be represented before 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 any trademark filers must provide all of the following: 
    • Name, postal address, and email address
    • Statement confirming to their active membership in good standing of a bar of the highest court of a U.S. state, Commonwealth, or territory
    • Bar membership information (state, bar number if applicable, and year of admission).

See more about U.S.-licensed attorneys.

  • Canadian patent agents are no longer authorized to represent Canadian trademark applicants, registrants, or parties before the USPTO in new trademark matters. See more about Canadian patent agents.
  • Canadian trademark attorneys and agents 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 and examination guide.

When is this rule effective?

This rule is effective as of August 3, 2019.

What are the goals of this rule?

The 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 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. An increasing number of foreign-domiciled trademark applicants, registrants, and parties have been filing inaccurate and possibly fraudulent submissions with the USPTO that do not comply with U.S. trademark law or the USPTO’s rules. Many appear to be doing so on the advice or with the assistance of foreign individuals and entities who are not authorized to represent trademark applicants, registrants, or parties before the USPTO (i.e., they are engaging in the unauthorized practice of law). In order to help ensure that foreign-domiciled applicants, registrants, and parties receive registrations that comply with U.S. legal requirements, we are ensuring that they will have the advice of an attorney licensed to practice law in the U.S. 

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. In order to ameliorate the abuse of the U.S. trademark registration system, we are now requiring U.S. counsel representation as a condition for foreign-domiciled applicants, registrants, and parties to file papers with the USPTO, as well.

This rule affects me. What should I do?


To learn about our examination procedures in light of these new requirements, read our exam guide, “Requirement of U.S.-Licensed Attorney for Foreign-domiciled Trademark Applicants and Registrants.” 

How does this rule affect how I use TEAS?

TEAS and TEASi forms have new requirements and have been updated to comply with this rule. Review the new requirements and updates.

Questions?

Email TMpolicy@uspto.gov with any questions.