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).

Canadian patent agents are no longer authorized to represent Canadian trademark applicants, registrants, or parties before the USPTO in new trademark matters. 

• 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.

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.

Foreign-domiciled trademark applicants, registrants, and parties

If you are foreign-domiciled, you are required to use a U.S.-licensed attorney to file your trademark-related submissions with the USPTO. This requirement also applies to all Canadian applicants, registrants, and parties.

Who is considered “foreign-domiciled”?

A “foreign-domiciled” trademark applicant, registrant, or party is one who does not have a domicile in the United States or its territories. An individual’s domicile is the place the person resides and intends to be the person’s principal home. An entity’s domicile is its principal place of business (headquarters) where the entity’s senior executives or officers ordinarily direct and control the entity’s activities.

Can foreign-domiciled applicants, registrants, or parties make submissions to the USPTO without an attorney?

Generally, no. You will need a U.S.-licensed attorney to file on your behalf for:

• The Trademark Electronic Application System (TEAS) Plus application form,
• All application-related and registration-related TEAS submissions.

Submissions made on paper or made using the Trademark Trial and Appeal Board’s Electronic System for Trademark Trial and Appeals (ESTTA) are subject to the same requirements.

For foreign-domiciled applicants filing applications using the Madrid Protocol under Trademark Act Section 66(a), beginning at the time of any provisional (or other) refusal (office action) U.S.-licensed attorney representation will be required. Section 66(a) applicants file their initial application with the International Bureau of the World Intellectual Property Organization. The International Bureau transmits that application to the USPTO. There currently is no ability to designate an attorney on the International Bureau’s forms.

What if my submission predates this rule?

• Trademark applications and registrations. If you filed your application, application-related, or registration-related submission with the USPTO before the effective date of this rule, and the submission is otherwise acceptable, then the submission will be accepted. But, if the USPTO issues an office action on or after August 3, 2019, you will need to appoint an attorney to respond and otherwise correspond with the USPTO on your behalf.
• Trademark Trial and Appeal Board proceedings. For foreign-domiciled parties who are not represented by a U.S.-licensed attorney, generally the TTAB will suspend the proceeding and issue an order informing  you of the time frame to retain a U.S.-licensed attorney to represent you in the proceeding.

U.S.-licensed attorneys

Trademark submissions* made after the effective date of this rule will require U.S.-licensed attorneys representing applicants, registrants, or parties to provide all of the following:

• 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
• Attorney bar membership information (state, number if applicable, and year of admission).**

*Electronic submissions are filed online through TEAS.

**Attorney bar information will not be made publicly available.

What if my submission predates this rule?

If you filed your client’s submission with the USPTO without your bar information before the effective date of this rule, we will generally accept that submission. You will be required to provide this information in electronic submissions filed after August 3, 2019.  Failure to include bar information in paper submissions filed after August 3, 2019 may result in an office action requiring this information.

Attorneys, beware of foreign solicitations asking to use your information

The USPTO has learned that U.S.-licensed attorneys are receiving emails offering to pay for the use of their attorney identification information in trademark filings. These solicitations appear to be an attempt to circumvent our rule requiring U.S. counsel representation at the USPTO.

Agreeing to such arrangements could be aiding the unauthorized practice of law and could violate our rules, including the Rules of Professional Conduct, 37 C.F.R. Part 11. Under our rules, attorneys must:

• Conduct a reasonable inquiry, before submitting any filing, to determine that the filing is not being presented for any improper purpose and that the facts have evidentiary support.
• Personally sign filings and correspondence.

Sanctions for violating these rules may include striking the filing, terminating the proceedings, and referring the attorney to the USPTO’s Office of Enrollment and Discipline (OED) for appropriate action. In addition, attorneys may be disciplined for such violations, including exclusion or suspension from practice before the USPTO, reprimand, censure, or probation. Attorneys disciplined by the USPTO also may be subject to discipline by their state bar.