Trademark Solutions for Foreign Trademark Applicants
09/10/19 Trademark
As of August 3, 2019, a foreign-domiciled trademark applicant is required to use a U.S. attorney to file a trademark application.
The USPTO revises the rules in parts 2, 7, and 11 of title 37 of the Code of Federal Regulations to require foreign applicants, registrants, or parties to a proceeding to be represented by an attorney, as defined in § 11.1, 37 CFR 11.1, that is, an attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any Commonwealth or territory of the U.S.) and who is qualified under § 11.14(a), 37 CFR 11.14(a), to represent others before the Office in trademark matters.
https://www.federalregister.gov/d/2019-14087/p-6
What does this new rule regarding foreign trademark applicants mean?
This means if you are a “foreign-domiciled” trademark applicant, which is defined as a person or entity that does not have a domicile in the United States (or US territories) then you will need a US attorney to file a US based trademark application on your behalf. This new rule for the most part also applies to Canadian entities. "Canadian trademark attorneys and agents 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." Emphasis added in bold. https://www.uspto.gov/trademark/laws-regulations/trademark-rule-requires-foreign-applicants-and-registrants-have-us#anchor1 A person's domicile is where the person resides at. "An entity’s domicile is its principal place of business (headquarters) where the entity’s senior executives or officers ordinarily direct and control the entity’s activities. " Id.Let Farjo Law PLLC provide your company with trademark solutions. If you are a foreign entity and wish to file a trademark in the United States, then we may be able to help. We are more than happy to work with your company or foreign attorney to find appropriate trademark solutions that will allow you to comply with this new USPTO rule. Just book a phone appointment or in person appointment (our office is located in Troy, Michigan which is part of the Metro-Detroit area).