Trademark protection is available to any individual or entity who uses a trademark in the United States. Since 2015, an average of 400,000 trademark applications have been filed with the United States Patent and Trademark Office (USPTO) each year. According to USPTO data, about 25% of those are filed by non-United States entities and individuals. Effective August 3, 2019 a new Rule will go into effect at the USPTO that changes how those parties must interact with the USPTO.
Who does this impact?
The Rule applies to non-United States parties, including all businesses that have a principal place of businesses (i.e. headquarters) outside the United States, as well as all individuals with non-US permanent addresses. Foreign nationals with residence in the United States or businesses with significant enough contact and business in United States are not impacted.
The Rule applies to all owners of trademark applications, trademark registrations and any other interested parties, such as a non-United States party seeking to oppose registration of a trademark in the USPTO.
What does the Rule require?
After August 3, 2019, all submissions to the USPTO by non-United States trademark applicant, registrants or other interested parties must be made through licensed United States counsel.
Any submissions received by USPTO directly from a foreign entity or individual (or any non-United States attorney or representative on their behalf) will result in an Office Action from USPTO requiring retainer of United States counsel before USPTO will entertain the submission. Any such Office Action will only delay ultimate registration of a mark and could, if not complied, result in abandonment.
What types of filings require United States counsel?
In short, when the Rule goes into effect, all submissions to the USPTO must be made through United States counsel. This includes initial applications; responses to Office Actions, submitting any required evidence of use or other documents; appearing in trademark opposition or cancellation proceedings and filing any trademark registration maintenance documents.
Don’t get caught short
With less than one month until the Rule goes into effect, it is important for non-United States trademark owners who have not yet done so to identify and retain United States counsel to represent them in the USPTO. Failure to do so will trigger USPTO actions that might delay registration of trademarks or even result in abandonment.
Henderson Franklin’s Intellectual Property practice group provides a full suite of trademark services to its clients and has significant experience representing clients from all over the world before the USPTO. If you have any questions or wish to speak with one of our Intellectual Property attorneys, please feel free to contact me at mark.nieds@henlaw.com or by phone at 239-344-1153.