Patents USPTO Announces NewTrademark Rule

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USPTO ANNOUNCES NEW TRADEMARK RULE REQUIRING FOREIGN-DOMICILED APPLICANTS AND REGISTRANTS TO HAVE A U.S.-LICENSED ATTORNEY

An important regulation change regarding the registration of trademarks has been imposed. The United States Patent and Trademark Office (USPTO) announced a new rule requiring all foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to be represented by an attorney who is licensed to practice law in the United States, in effect August 3rd, 2019.

The requirement applies to all trademark applicants, registrants, and parties whose permanent legal residence or principal place of business is outside the United States. These applicants, registrants, and parties are required to have a U.S.-licensed attorney represent them at the USPTO in all trademark matters. Additionally, U.S.-licensed attorneys representing anyone before the USPTO in trademark matters are required to confirm they are an active member in good standing of their bar and to provide their bar membership information.

“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,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Andrei Lancu. “This rule is a significant step in combatting fraudulent submissions.” …“Many other countries worldwide have had this requirement for decades,” said USPTO Commissioner for Trademarks Mary Boney Denison. “We believe that this new rule will help improve the quality of submissions to the USPTO.”

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.

The USPTO states that they “discovered an increasing number of foreign trademark applicants, registrants, and parties who were filing inaccurate and possibly fraudulent submissions 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”.

Angiolina Galluccio Biz Economist Writer

The process begins with the name search in case there is no other equal, similar or sound the same or similar. The search of a brand name is cost cero.

TEAS and TEASi forms have also new requirements and have been updated to comply with this rule. For questions about this TEAS and TEASi release, email TEAS@uspto.gov

The attorney fee may be between US $ 1,500 to US $ 2,500. The approval process for the brand may take about six months. Note that before this rule, the registration could have been done directly through the USPTO website with fees from $ 225 to $375, without the need of having an attorney in the United States. This new rule is to avoid fraudulent registrations from third parties who may be using a brand name that does not belong to them. In other words, the new rule will help brand name owners to also protect their brand.

For a more thorough understanding of this new federal trademark law, please visit the rule page on the USPTO website.