C.A.G. Insights

USPTO Requires Foreign Trademark Applicants to Appoint U.S. Attorney

Written by Vincent Allen

The U.S. Patent and Trademark Office (USPTO) now requires that any applicant, registrant or party to a trademark proceeding whose domicile is not located within the U.S. must be represented by a U.S. attorney. You can find the new rule at 37 C.F.R. § 2.11. The rule was effective August 3, 2019 and applies to new applications or proceedings filed on or after the effective date. Trademark oppositions and cancellation proceedings are also included.

Domicile and Principal Place of Business Defined

The domicile of an applicant is defined as “the permanent legal place of residence of a natural person or the principal place of business of a juristic entity.”  “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.”

Applies to New Filings in Applications Pending Prior to August 3, 2019

Even for applications filed prior to August 3, 2019 or existing registrations, the new rules require that a U.S. attorney be appointed before any new filing in the matter. This can be accomplished by submitting a Power of Attorney with any new filings, such as a response to office action, statement of use or application for renewal of a registration. Making a new filing without appointing a U.S. attorney will result in an office action requiring the appointment of a U.S. attorney, thus delaying the application or renewal.

Madrid Protocol Applications Exempted Temporarily

The U.S. attorney requirement applies to a request for extension of protection transmitted by the International Bureau of the World Intellectual Property Organization to the USPTO under the Madrid Protocol. However, there is currently no mechanism in place at the International Bureau for designating a U.S. attorney.  Until such a mechanism is put in place, foreign applicants may file without a U.S. attorney. However, a provisional refusal may later be issued that requires the appointment of a U.S. attorney.

One Power of Attorney Can be Used for Multiple Applications

For foreign individuals or entities that own multiple applications, a single power of attorney can be filed for all trademark applications. Thus, the rule can be satisfied for the client in one simple step on multiple applications for a foreign applicant, provided the applications have the identical owner name and attorney.  37 C.F.R. 2.17(d).

Let Carstens, Allen & Gourley, LLP Help You

Carstens, Allen & Gourley, LLP regularly practices before the USPTO in both patent and trademark matters. With our dedicated trademark paralegals and attorneys, we can assist foreign counsels and applicants to efficiently comply with the new rule while taking direction from foreign counsels on the various filings required. Whether you have a pending application or are in the middle of a trademark opposition or trademark cancellation proceeding before the USPTO, we can help.

For more information, contact trademark attorney Vincent Allen directly at +1-972-367-2001 or send an email to allen@caglaw.com.