The United States Patent and Trademark Office (USPTO) published a proposal to change federal trademark law (our rules of practice) to require foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to use an attorney who is licensed to practice law in the United States. See the Notice of Proposed Rulemaking.
Overview of the proposed changes
The requirement applies to trademark applicants, registrants, and parties who have a permanent legal residence or a principal place of business outside the United States. The proposed changes would require these applicants, registrants, and parties to hire an attorney who is licensed to practice law in the United States to represent them at the USPTO.
Find out more information about how to hire a private U.S.-licensed trademark attorney.
Change would affect U.S.-licensed attorneys
In addition to the above proposed change, U.S.-licensed attorneys representing anyone before the USPTO in trademark matters would be required to confirm that they are an active member in good standing of their bar and provide their bar membership information.
Any U.S.-licensed attorney who has an active bar membership and is in good standing, regardless of where the attorney resides (including outside the United States), can continue to represent foreign and domestic trademark applicants and registrants at the USPTO.
Beware of foreign solicitations asking to use your information
We've learned that U.S. attorneys are receiving emails from persons located in China, and perhaps elsewhere, offering to pay to use their information in trademark filings. These solicitations appear to be an attempt to circumvent the U.S.-counsel requirement.
Agreeing to such arrangements would likely be aiding unauthorized practice of law and violating our rules, including the Rules of Professional Conduct, 37 C.F.R. Part 11. Our rules require attorneys to personally sign filings and correspondence. Before submitting any filing, attorneys must conduct a reasonable inquiry to determine that the filing is not being presented for any improper purpose and that the facts have evidentiary support. The USPTO Director may impose sanctions for violations of these rules, including striking the filing, terminating the proceedings, or referring the attorney to the USPTO's Office of Enrollment and Discipline for appropriate action. Attorneys may receive discipline for violations of these rules, including exclusion or suspension from practice before the USPTO, reprimand, censure, or probation. Attorneys disciplined by the USPTO also may be reciprocally disciplined by their state bar.
We'd like to know about these solicitations. If you receive a solicitation asking to use your information, please forward it to TMFeedback@uspto.gov.
- To increase customer compliance with federal trademark law
- To ensure the accuracy of submissions to the USPTO
- To ensure the integrity of the U.S. trademark register
Submit your comments on the proposed changes
We will accept comments from the public until March 18, 2019. See the Notice of Proposed Rulemaking for instructions on how to submit comments.