Martensen Wright PC

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Trademark News

By Allison Post Harris, Attorney at Law

As of August 3, 2019, the United States Patent and Trademark Office (“USPTO”) requires all non-U.S.-headquartered businesses and non-U.S. domiciled persons who apply, register or are involved in U.S. trademark proceedings to be represented in those proceedings by an attorney who is licensed to practice law in the United States. No filing with the USPTO by a foreign-domiciled trademark applicant will be deemed complete until the applicant has, on the application form, provided the USPTO with the name of the U.S. licensed attorney that represents the applicant. The attorney must be an active member in good standing of the bar of the highest court in any state in the U.S. and must provide his or her bar information to the USPTO.

The USPTO effected this rule to ensure that filings are accurate and comply with the USPTO’s rules. Previously, the foreign patent attorneys or patent agents could seek reciprocal recognition to practice law in USPTO trademark matters. As of August 3, 2019, this reciprocity is no longer available to non-U.S.-licensed attorneys and agents.

Trademark applicants have six months to respond to a rejection of their trademark applications then they are rejected for lack of representation by a U.S.-licensed attorney.

Our team has attorneys licensed to practice law in California, U.S.A., which qualifies us to provide the necessary representation to overseas companies under the new USPTO rule. We also have experience advising businesses on their trademark proceedings. Please contact us if we can be of assistance with U.S. trademark proceedings.