USPTO Examination Guide: Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants
The USPTO has issued Examination Guide 4-19 (August 2019), entitled "Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants." (pdf here). Effective August 3, 2019, amended Rule 2.11 requires foreign applicants, registrants, or parties to a trademark proceeding to be represented by a U.S. attorney. Furthermore, the USPTO may require such applicants, registrants, or parties to: (1) furnish information or declarations necessary to the proper determination of whether the applicant, registrant, or party is subject to the requirement for a U.S. attorney, and (2) to state whether assistance was received in a trademark matter before the USPTO and, if so, to disclose the name(s) of the person(s) providing such assistance and whether any compensation was given or charged.
In addition, all applications must include the applicant’s domicile address, and foreign applicants must appoint a U.S. attorney for the application to meet the requirements for a complete application. Foreign applicants submitting an application using the TEAS Plus filing option will be required to designate a U.S. attorney in the application in order to complete the submission of the application.
Read comments and post your comment here.
TTABlog comment: This new rule applies retroactively to pending TTAB matters. A foreign party will be notified of the requirement to appoint counsel and the case will be suspended pending such appointment.
Text Copyright John L. Welch 2019.
posted by John L. Welch @ 8/05/2019
5 comments
5 Comments:
Did anyone else overlook where they were going to require US applicants with an AOR enter their bar number and info into the record? Because I missed this and took us for surprise. Presume this is for all filings on pending applications, but likely they'll ask for is in 8/15 and 8/9s and anything else post reg. Seems we need to do a bulk update for all our marks...?
Anyone else miss this part?
If a U.S. citizen is living overseas, does the requirement to engage an attorney in order to transact with the USPTO violate that citizen's First Amendment rights to "petition the government"? What other government entities REQUIRE an attorney in order to transact with them?
Or the Fourteenth Amendment's Equal Protection Clause. A U.S. citizen living in Nebraska and a U.S. citizen living in, e.g., Australia, should have equal ability to transact with the USPTO pro se. They need to exempt individual U.S. citizens from this requirement.
In reply to the two comments above, the new rule is based on domicile not national citizenship or country of organization. Thus, a U.S. citizen with a foreign address would be required to retain counsel. Also, an applicant who is a citizen of a foreign country but who is domiciled in the U.S. would not be required to retain counsel but could be required to confirm their domicile for the record.
a U.S. citizen, regardless of where they live, should not be required to have counsel in order to interact with the U.S. federal government.
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