In May 2019, the USPTO announced that as of August 3, 2019, all international applicants for US trademarks must be represented by US counsel. The final rule has been published in the Federal Register. This means that to submit a new trademark application, to respond or enter documents into a pending trademark application, or to renew existing registrations, international individuals and businesses must hire a US attorney to represent them and submit these materials on their behalf.
The new rule is intended to satisfy 3 goals: (1) increase USPTO customer compliance with US trademark law and USPTO regulations, (2) improve the accuracy of trademark submissions, and (3) safeguard the integrity of the US trademark register. Since domestic and international businesses rely on the US trademark register to make important business and legal decisions about their brands, the USPTO determined that requiring international applicants be represented by counsel would help them maintain compliance with their stringent trademark rules. It found that an increasing number of international applicants had filed inaccurate and potentially fraudulent submissions with the USPTO. Some cases have even involved governments and business entities offering cash bounties in the form of subsidies for successful registrations of trademarks in the US. The USPTO found that these applicants often were represented by non-lawyer consultants, in violation of unlicensed practice of law policies.
To protect international applicants from unwittingly participating in fraud facilitated by these international non-lawyer consultants, and to otherwise harmonize the USPTO rules with its international trademark office peers, this policy now requires electronic submissions by international applicants to be submitted by US attorneys having verified credentials with the USPTO. In fact, as of October 26, 2019 all applicants, domestic and international, are now required to obtain USPTO credentials in order to submit trademark documents in order to prevent misuse of the online system. Through 2020, you can expect the USPTO to take further steps to increase security and reduce fraud. These will include verification of each my.uspto.gov account and adding the ability to delegate and control access to filings.
Due to these changes, it’s now more important than ever to have experienced trademark counsel represent you before the USPTO. If you are an international or domestic applicant who wants to be represented by a firm with decades of experience protecting brands with US trademarks, please call Grell & Watson Patent Attorneys for a free consultation.