UPDATED SEPTEMBER 23, 2019
On July 2, 2019 the United States Patent and Trademark Office (“USPTO”) formally adopted a new rule requiring that all foreign trademark applicants must be represented by U.S. counsel. The new rule went into effect on August 3, 2019. Below, we explain the rationale for the new rule and how it affects foreign trademark owners.
- Beginning August 3, 2019 all foreign applicants applying for trademark protection in the U.S. must be represented by U.S. counsel before the USPTO.
- Failure to identify U.S. counsel on the application or a subsequent Office Action (for Madrid Protocol applications) will delay the approval of your application.
- Kalamaras Law Office has been representing foreign clients and working with foreign associate colleagues for more than 14 years. If you require assistance with your clients for any matter large or small, it would be our pleasure to assist you. Much of our work is done on a fixed fee basis. Please feel free to contact us with any questions or concerns.
Implementation of the Rule in Practice
For most of you, there is no change. You will continue to contact us or your preferred U.S. counsel when you are about to file your application. Your client will be required to sign the application as always and the U.S. attorney will be identified in the section of the application where the attorney/correspondent is identified. (Please note: this is our practice to have the end client sign all key documents, and is a best practice, but whomever you work with may not require this step. We do, because all key documents at the USPTO are signed under penalty of perjury by those who have firsthand knowledge of the facts in the application/document). This is the process whether you are filing based on a foreign application/registration or whether your client is filing a new application based on an intent-to-use or use basis in the U.S.
If, on the other hand, you are filing a Madrid Application, you may still continue to extend the application in your home country into the U.S. as you normally do. While there is no provision at WIPO to assign a U.S. attorney, in nearly all cases, an Office Action will issue anyway for at least the identification of goods/services. If for whatever reason it doesn’t, our understanding is that no matter the reason, an Office Action will issue, even if to identify a U.S. attorney for the application. In most instances, there is a substantive reason for the Office Action in addition to identifying the U.S. attorney for the Madrid application.
Our understanding is that failure to comply with the rules will trigger an Office Action until you identify a U.S. attorney for your foreign application.
Assigning U.S. Counsel in an Office Action Filed by Foreign Applicants
Since the rule change, we have been contacted by many of you asking us to simply respond to the Office Action on your behalf. While we are always ready and willing to assist, please understand that we cannot “just respond to the Office Action.” This is not allowed under the new Rules and flies in the face of the rationale for the rule (see immediately below). The new rule was put into place so that all foreign applicants will have the benefit of being represented by U.S. counsel. For instance, when applications are published for opposition, it is difficult for third parties and the Trademark Trial and Appeal Board to contact applicants when they reside outside of the U.S. By having an appointed U.S. counsel of record, it streamlines the system for all and allows us – as your U.S. counsel of record – to advise you of your rights under the U.S. Trademark Rules of practice. Even if your Office Action seems straightforward, we are required to become the attorney of record on your/your client’s application. This requires us to enter the matter into our docket system and monitor, receive, and report all correspondence from the USPTO up to and including the Certificate of Registration. These services are priced according to the nature of your Office Action, but generally on a flat fee basis. We look forward to working with you, and encourage you to contact us before you file, especially if you are not filing through Madrid so that your client can realize the most cost savings.
Many of you have expressed concern regarding the additional costs; however, we note that if you engage U.S. counsel from the start and work with counsel experienced in the Trademark Rules of practice, your clients will have the benefit of ensuring their goals are realized and the trademark protection they seek to have in the U.S. is accomplished and as a result, enforceable.
The Rationale for the New Rule
The USPTO’s role is to provide a Registry of trademarks that are actually in use in commerce in the United States and the public relies on the USPTO’s database when searching whether a new mark is available for use and registration. The USPTO views its role not only as protecting consumers, but also as protecting businesses and their brand assets.
In recent years, there has been an influx of foreign filed applications, many of which have been filed by trademark applicants that have not been represented or guided by U.S. counsel. As a result, the USPTO has found that this has added increased costs and burden due to foreign applicants not being familiar with the U.S. Trademark Rules of practice. When foreign applicants are making legal claims before the USPTO, this is resulting in an increase of unauthorized practice of law claims, which jeopardize the trademark rights in those applications. The rules in the U.S. are very different from other jurisdictions and filing and responding to Office Actions without being well-versed in the U.S. system can have serious consequences for the rights of the U.S. trademark owner. This not only affects the integrity of the trademark register, but can lead to costly opposition and cancellation proceedings if marks are approved that should not have been. It also makes it difficult for the Trademark Trial and Appeal Board to find applicants when third parties want to oppose and/or cancel a mark.
Surge in Foreign Filings
Based on data as of December 31, 2018, foreign applications now account for at least 25% of all applications filed at the USPTO and nearly half of those foreign applicants are not represented by counsel. The USPTO has identified much of the information in the applications to be inaccurate, including the address or name of the applicant, making contacting the applicant, in the event that a third party wishes to file an opposition or cancellation proceeding, nearly impossible. To this end, this rule change was necessary. Now, in the U.S., just as in many other jurisdictions around the world, only those attorneys admitted in the local jurisdiction may act before the local Trademark Office. This is a rule that has a common sense practicality to it.
Stacey C. Kalamaras is the founding partner of Kalamaras Law Office, LLC. She has extensive intellectual property experience with a particular focus on trademark prosecution and enforcement. She has protected some the world’s largest brands in more than 150 countries and specializes in helping small and medium sized businesses grow and protect their brands. Contact her at email@example.com.
Stacey is also the founder and lead instructor of Trademarkabilities®, an online trademark academy for lawyers, whose mission it is to prepare lawyers to be confident and effective practitioners before the USPTO. To learn more, please visit https://www.trademarkabilities.com/.