USPTO New Trademark Rule

September 18, 2019

USPTO requires foreign-domiciled applicants and registrants to appoint a U.S.-licensed attorney as of August 3, 2019

New trademark rule (C.F.R. Title 37) by United States Patent and Trademark Office (USPTO) requiring all trademark applicants, registrants, and parties whose permanent legal residence or principal place of business is outside the United States (hereafter foreign applicants, registrants, or parties) to appoint a U.S.-licensed attorney has recently become effective.

 

Before this new rule, filing/registering trademarks in the U.S. without appointing representative was allowed. However, the necessity of U.S. licensed attorney to represent the trademark matters before the USPTO arose as those trademark filings in the U.S. without U.S. representative often failed to follow the regulations.

The USPTO will issue Office Actions against any foreign applicants, registrants, or parties without U.S. attorney representing their trademark matters before the USPTO. In this case, those who receive the Office Actions should appoint the U.S.-licensed attorneys within six months and notify the appointment to the USPTO through the appointed attorneys.

 

May Korean corporations and individuals doing business in the U.S. or with intentions to initiate their business in the U.S. in the future, have been filing trademarks in the U.S. Korean corporations and individuals considering filing trademarks in the U.S. should be aware of this new rule of the USPTO to avoid unnecessary obstacles in protecting their trademarks or delay in the process. By appointing U.S.-licensed attorneys at the stage of filing, Korean corporations and individuals will be able to receive more professional assistance from the beginning.

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