By: Jon Gibbs
on August 3, 2019, the United States Patent and Trademark Office (USPTO) will
require foreign-domiciled trademark applicants, registrants, and parties to
Trademark Trial and Appeal Board proceedings to be represented by an attorney
who is licensed to practice law in the U.S. The rule applies to all trademark
applicants, registrants, and parties whose permanent legal residence or principal
place of business is outside the U.S. and is intended to enhance compliance
with regulations, accuracy of trademark submissions, and safeguard the
integrity of the Trademark Register.
For purposes of clarity, outside of the United States includes Canadian
applicants, registrants, and parties. Canadian patent agents will no longer be
authorized to represent Canadian trademark applicants, registrants, or parties
before the USPTO in trademark matters. Canadian trademark attorneys and agents,
however, may 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.
In addition to foregoing, U.S. licensed attorneys representing
anyone before the USPTO in trademark matters are required to confirm they are
an active member in good standing of their bar and to provide their bar
For more information about this change, please contact Jon Gibbs
or a member of the firm’s Intellectual
Property Services Group.