New USPTO rule requires foreign parties to have a U.S. attorney

A new rule from the U.S. Patent and Trademark Office imposes a substantial new requirement on companies and individuals outside of the U.S. Starting August 3, foreign applicants and registrants must be represented by a U.S. attorney. All new applications, renewal filings and Trademark Trial and Appeal Board (“TTAB”) disputes filed on behalf of a foreign company must be filed by a U.S. attorney.

The new requirement applies only to “foreign-domiciled” individuals and companies. A party is “foreign-domiciled” if it is: (1) an individual with a permanent legal residence outside of the U.S.; and/or (2) an entity with its principal place of business (i.e., its headquarters) outside the U.S. or its territories.

The new rule affects new and current filings. If a trademark application was filed, or a registration obtained, before the new rule is implemented, the USPTO will not require a U.S. attorney be appointed. But, if the USPTO issues an Office Action or if a statement of use becomes due, such a document would need to be filed by a U.S. attorney. Thus, even a filing that predates the new rule will need a U.S. attorney at a certain point if the applicant or registrant wishes to maintain the filing.

The effect on TTAB disputes is even more immediate. If a foreign-domiciled party is party to a current TTAB dispute but is not represented by a U.S. attorney, the TTAB will suspend the proceeding and require that a U.S. attorney represent the party.

The new rule takes effect on August 3, 2019, and foreign-domiciled applicants, registrants and parties to TTAB disputes should begin planning now. The USPTO may be unlikely to give foreign-domiciled parties additional time to make even necessary filings if they have not yet engaged U.S. counsel. Thus, foreign parties which are not represented should begin working now to engage a U.S. attorney.