New Trademark Rule Requires Foreign Applicants and Registrants to have a U.S.-Licensed Attorney (USPTO)

Starting August 3, 2019, all foreign applicants and registrants will be required to have a U.S. licensed attorney in order to register and/or renew a trademark with the United States Patent and Trademark Office (“USPTO”). See Federal Register, Volume 84.

Here are few highlights regarding the new rule:

  1. “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.” (USPTO Press Release).
  2. “The rule also requires U.S.-licensed attorneys representing any applicant, registrant, and party in trademark matters to confirm they are an active member in good standing of their bar and provide their bar membership information.” (USPTO Online Filing).
  3. “The term “domicile” means the permanent legal place of residence of a natural person or the principal place of business of a juristic entity. 37 C.F.R. §2.2(o). The “principal place of business” is the location of a juristic entity’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities and is usually the center from where other locations are controlled. 37 C.F.R. §2.2(p). Under this rule, applicants and registrants must provide and keep current the address of their domicile. 37 C.F.R. §§2.22(a)(1), 2.32(a)(2), 2.189. The initial determination of whether an applicant’s, registrant’s, or party’s domicile is within or outside the U.S. is based on its physical address. A post-office box cannot be a domicile address. When necessary, the USPTO will require an applicant or registrant to verify its domicile.” (USPTO Examination Guide 4-19).

The attorneys at Cohen & Daneshrad, LLP have experience filing and renewing federal trademarks with the USPTO. Here are examples* of trademark registrations that we have secured, renewed or applications that are currently in the works with the USPTO:

  • USPTO Registration No.: 5605822
  • USPTO Registration No.: 5575294
  • USPTO Registration No.: 4360381
  • USPTO Serial No.: 88546895
  • USPTO Serial No.: 88531239

At Cohen & Daneshrad, LLP we routinely assist our clients in both litigation and transactional matters. Our attorneys are licensed by the State Bar of California and, among other areas, practice intellectual property law.

Disclaimers:

*Each registration/case is different. This firm does not guarantee or warranty the outcome of your registration/case.

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