United States Trademark Application
September 18, 2019
Will my domicile affect my U.S trademark?
The above question applies to foreign trademark applicants that are not US nationals. There have been recent changes proposed by the United States Patent Trademark Office (USPTO) which you should be aware of when it comes to filing your trademark application. Compliance of the new rule is required by all foreign filers including Canadian trademark filers. However, the new rule will not affect US nationals domiciled in the United States or its territories.
On August 3, 2019, the United States Patent Trademark Office adopted a policy requiring all foreign domiciled applicants and registrants filing a trademark in the US to be represented by a U.S Licensed attorney. Foreign domiciled trademark applicants are either or both: 1) permanent legal residence outside the US or its territories 2) principal place of business (headquarters) outside of the US or its territories. So, to file a foreign trademark application must be submitted by a licensed US attorney.
US Licensed Attorney
There are certain requirements for the US licensed attorney. They are required to provide bar membership of the state they are licensed to practice in and be an active member of the bar in good standing. There is no requirement that the attorney has to be licensed in the state where the trademark is being filed. However, if the attorney may need to assist you in court for the representation of your trademark issue in state or federal court, the attorney may be required to be licensed in the state of where representation is to proceed. The USPTO has a Trademark Trial and Appeal Board which carries out hearings and decides certain trademark cases. In this situation, a US licensed attorney from any state or US territory may represent the trademark filers case.
Why and the Statistics
An important question to ask is: why this policy has come into force? The reasons are listed below:
- Prevent fraudulent submissions
- Improve the accuracy of trademark submissions
- Increase customer compliance with US trademark laws
- Increase customer compliance with USPTO regulations
Interesting statistics released by the World Intellectual Property Organization (WIPO) estimated that in 2016, 7 million trademark applications were filed worldwide. Of this 25 % are foreign trademark applications by non US states and entities. In the United States, the most amount of foreign filers was from China with 11% of total applications. These rise in numbers have shown defects in the filing. For example, the defects are not limited to an unauthorized change in correspondence address and fake submissions to show the use of a mark in commerce.
Failure to be represented by a US licensed attorney will result in an office action. An office action is when the USPTO trademark examining attorney has reviewed your application for registration and finds issues that need to be addressed before the application can proceed. If there is the failure to be represented by a US licensed attorney as required by law, this will be stated in the office action letter by the USPTO. The application cannot proceed until the office action has been satisfied as explained in the official letter by the trademark examining attorney. Office actions are not uncommon and can be overcome for the trademark registration to proceed.
With the rise of trademark applications by foreign filers, the USPTO has adopted this new policy. It is aimed at maintaining accurate submissions for non-accurate submissions can result in the trademark application being abandoned or cancelled. The new policy is in favour of the trademark filer and the USPTO who can maintain compliance with trademark laws and regulations designated by the USPTO.