3 July 2019Trademarks

Foreign TM applicants must use US lawyers: USPTO

The US Patent and Trademark Office (USPTO) will soon require all foreign-domiciled trademark applicants to be represented by an attorney licensed to practice law in the US.

The new rule, effective as of August 3, will also apply to proceedings before the USPTO’s Trademark Trial and Appeal Board (TTAB).

According to a USPTO press release, the changes will apply to all applicants, registrants, and parties before the TTAB whose permanent residence or place of business is located outside the US.

USPTO director Andrei Iancu said that the new rule was a “significant step in combating fraudulent submissions”.

“In order to maintain the accuracy and integrity of the register, for the benefit of all its users, the USPTO must have the appropriate tools to enforce compliance by all applicants and registrants,” Iancu said.

The USPTO initially floated the idea in February earlier this year, amid concerns over inaccurate and potentially fraudulent submissions in trademark proceedings.

USPTO commissioner for trademarks Mary Boney Denison noted that “many other countries worldwide have had this requirement for decades”.

The rule will bring the US into line with other jurisdictions such as Brazil, China, and the European Union.

“We believe that this new rule will help improve the quality of submissions to the USPTO,” Denison added.

US-licensed attorneys will also be required to demonstrate that they are “an active member in good standing of their bar”, the office said.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories like this sent straight to your inbox.

Today's top stories:

“Fack Ju Göhte” TM appeal should be heard, says AG

Andy Warhol Prince ruling ‘unsurprising’, say lawyers

Engineer convicted of illegally exporting missile chips to China

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at

More on this story

22 July 2019   The US Patent and Trademark Office has identified China as the source of an increasing number of bad faith trademark filings in the US.
19 May 2021   Proposals by the US Patent and Trademark Office to amend the Trademark Modernization Act of 2020 in a bid to improve the integrity of the trademark register have been criticised by lawyers.
25 June 2021   The US Patent and Trademark Office is dealing with an “unprecedented” surge in trademark applications, causing delays in processing and reviewing, which could be linked to a number of suspected falsified applications from China.