Tom Dunlap HeadshotBy Thomas Dunlap

Partner at Dunlap Bennett & Ludwig


[10.02.2019 Leesburg] The number of new trademark filings from international, or non-US companies has increased dramatically in the last decade.  Until recently, these international trademark applications were filed with the United States Patent and Trademark Office (USPTO) by non-US based companies through their foreign lawyers or through a corporate representative.  However, beginning August 3, 2019, according to the USPTO, all “trademark applicants, registrants, and parties who have a permanent legal residence or a principal place of business outside the United States” must file any United States trademark application through a lawyer based in the United States.

While this may seem heavy-handed, the USPTO outlined the reasons for the new regulation.  The three goals of the rule are:

  1. To ensure the accuracy of submissions to the USPTO
  2. To increase customer compliance with federal trademark law
  3. To ensure the integrity of the US trademark register

Much of the rule is aimed at combating fraudulent trademark applications from foreign applicants. Another reason comes as a result of a Chinese government’s subsidy that provides a bonus or financial incentive to any Chinese citizen that successfully registers a trademark in the United States.  In some cases the Chinese applicants were filing trademarks and either not following through with the application or, even when the marks became successfully registered, they were not then using the trademarks in commerce to sell any goods or services, thus essentially creating a kind of trademark spam on the principal register.

US attorneys who are familiar with the trademarks system have a much higher likelihood of avoiding USPTO rejections, and of successfully responding to office actions and rejections from the USPTO.  Any foreign company that has filed an application has six months to find US-based counsel to respond to an office action that will issue requiring a US attorney sign and enter a valid US bar number as part of the application.  Likewise, any maintenance filings for applications registered before August 3 will also need a US licensed attorney of record.

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Posted in: Intellectual Property

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