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Practice Alert: U.S. Trademark Office


On 3 August 2019, a new rule takes effect at the United States Patent and Trademark Office (the “Office”) that changes the dynamics of trademark filing, prosecution, and post-registration proceedings in the U.S. This new rule requires foreign-domiciled trademark applicants, registrants, and parties (including Canadian trademark filers) to have a U.S.-licensed attorney represent them in front of the Office.

So, what does this mean? Generally, any submission made to the Office following the effective date of these new rules will need to be done by a U.S.-licensed attorney. Filings done before that time should be accepted by the Office. However, filings done after that date, even those in reply to correspondence (e.g., Office Actions) the applicant received before the effective date, will need to be done by a U.S.-licensed attorney. The requirement for U.S. counsel also applies to post-registration maintenance and proceedings before the Trademark Trial and Appeals Board.

In practice, if an application is filed without identifying a U.S. attorney, the Office may examine the application in the usual course and include the requirement that a U.S. attorney be entered in the record as a requirement in the Office action. However, the Office does “retain[] its discretion to defer substantive examination and examine only for this or other requirements in appropriate circumstances (emphasis added).” See, 84 Fed. Reg. 31,504. The foreign-domiciled applicant would have the usual period of six months to respond to an Office action including the requirement, and failure to comply would result in abandonment of the application.

Notably, the new rules affect Canadian counsel (including both patent agents and attorneys) as well. Canadian patent agents will no longer be authorized to represent Canadian trademark applicants after 3 August 2019. Those attorneys and agents that are reciprocally recognized by the Office of Enrollment and Discipline (“OED”) will be recognized as “additionally appointed practitioners” – but a U.S.-licensed attorney must be appointed to file formal response AND the Office will only correspond with the U.S.-licensed attorney for the Canadian trademark applicant, registrant, or party.

For additional information or questions, feel free to contact Michael Wasco, Head of the Patents + Intellectual Property Practice, at mwasco@pfclaw.com.