On August 3, 2019, U.S. Trademark law is going to change for every foreign company or individual looking to protect their brand in the USA. Previously, a foreign applicant was able to file a trademark or respond to an office action from their country of origin, but the USPTO has submitted the final ruling published on the Federal Register which will mandate all foreign applicants, whether submitting an application to register a mark or responding to an office action, to do so through a U.S. licensed attorney.
Why is the USPTO creating this rule?
- Maintain the integrity of the trademark registration process
- Enforce compliance with existing rules
- Reduce fraudulent filings
- Deter pro se applications
The flood of international registrations has brought an increased number of fraudulent and/or improper trademark applications from foreign registrants. These trademark applications not only delay the application process for other applicants, but they also weaken the integrity of trademarks.
In addition, foreign registrants who are "pro se" (working without an attorney) may have more issues throughout the application process, often resulting in a higher percentage of rejections. The new proposal will assist both the trademark registrant and the USPTO with streamlining the application process, ensuring fewer delays along the way. With the assistance of U.S. legal representation, foreign applicants are more likely to have a smooth registration process, resulting in a higher likelihood of approval from the USPTO.
What happens now?
If you apply/have applied for a trademark as a foreign applicant prior to August 3, 2019, you do not need to move forward with a U.S. attorney if your application goes through smoothly. If you receive an "office action" (request or response from USPTO about the application), you would need to work with a U.S. attorney to respond to that office action even if you didn't need to file the initial application through a U.S. attorney.
For U.S. citizens, the final ruling will have little to no impact on your application process. However, it is still highly recommended that you work with a local attorney to handle your application to ensure a smoother process.
You can find out more information on this new rule on the USPTO site here. Don't forget to conact the Law Office of Elliott J. Brown for any questions or concerns you may have about the new ruling or trademark law in general.