USPTO Adopts New Rule Requiring Foreign-Domiciled Individuals and Entities to be Represented by U.S.-Licensed Counsel in Trademark Matters

September 15, 2019

By means of a newly-adopted regulation that became effective on August 3, 2019, the United States Patent and Trademark Office (PTO) now requires foreign-domiciled trademark applicants, registrants, and parties to be represented by an attorney admitted and eligible to practice in at least one American state or territory. In connection with this requirement, a trademark applicant domiciled outside the United States is now required to appoint a U.S. attorney in order to complete their application or registration with the PTO. Foreign-domiciled parties involved in Trademark Trial and Appeal Board (TTAB) proceedings are also generally required to retain a U.S. attorney to initiate new proceedings or avoid suspension of existing proceedings. The regulation also limits the capabilities of foreign agents previously granted authority to represent foreign clients before the PTO, requiring U.S.-licensed counsel to take the lead where authorized foreign agents remain involved.

The PTO’s justification for this new regulation lies in maintaining the accuracy of the trademark register, preventing fraudulent or misleading filings, and protecting against unauthorized practice of law. Foreign trademark filings have surged in recent years. In connection with this trend, the PTO has reported an uptick in inaccurate and potentially fraudulent submissions attributable to foreign parties, potentially based on advice of foreign individuals and entities not authorized to be involved in U.S. trademark matters.

While the sweep of the new regulation appears broad, technical considerations govern whether an individual or entity is deemed “foreign domiciled,” and therefore required to appoint U.S.-licensed counsel in connection with an application, a registration, or a TTAB proceeding. Generally, a party will be deemed foreign domiciled if it does not maintain its domicile within the United States or its territories. With respect to individuals, domicile is generally recognized as the place where the person resides and intends to keep their principal home. Businesses and other entities are generally recognized to be domiciled at their principal place of business (i.e., the headquarters) where the senior executives or officers ordinarily direct and control activities. 

Notably, the new regulation may not pose an immediate threat to those applications, registrations, and proceedings involving foreign-domiciled parties not represented by U.S.-licensed counsel that were already pending before the regulation went into effect. For a matter not concluded prior to that date (August 3, 2019), however, a foreign-domiciled party will need to be represented by U.S.-licensed counsel in order to proceed with the matter and avoid cancellation or suspension. In any case, foreign-domiciled parties generally must retain U.S.-licensed counsel for trademark applications, registrations, and proceedings initiated on or after August 3, 2019. Those foreign-domiciled parties that do not comply with this requirement will receive a PTO “office action” rejecting their application, registration, or submission.

The attorneys of Crosby & Higgins LLP have a wealth of experience representing clients from around the world before the USPTO and are eligible to represent foreign-domiciled parties in trademark applications, registrations, and proceedings. Please contact us for more information.