USPTO to Require U.S. Licensed Attorney for Trademarks

July 25, 2019 | Luke T. Mohrhauser

Luke T. Mohrhauser; Intellectual Property Attorney; McKee, Voorhees & Sease, PLC

Businesses in Iowa, as well as those throughout the United States, rely on the United States Patent and Trademark Office (USPTO) to register their trademarks. A trademark or service mark includes any word, name, symbol, device or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services. Registering a trademark or service mark with the USPTO gives numerous advantages to businesses, such as notice to the public of the registrant's claim of ownership of the trademark, legal presumption of ownership nationwide and exclusive rights to use the trademark on or in connection with the goods/services listed in the registration.

Recently, studies have shown there to be an influx of trademark applications being filed in the name of foreign entities, and using foreign representation or self-filing. Some of these applications have shown to be fraudulent, misleading, improperly filed or otherwise deficient. In some cases, it appears that the trademarks have been filed as a way to cybersquat on a name or trademark to prevent legitimate businesses from using the name. When the USPTO tries to reach out to the registrants, the addresses may not be legitimate.

Therefore, in an effort to combat the issues, and to maintain the integrity of the U.S. Trademark Registry, on July 2, 2019, the USPTO released a rule related to foreign-domiciled trademark applicants, registrants and parties to Trademark Trial and Appeal Board (TTAB) proceedings. The rule, which takes effect on August 3, 2019, states that all foreign-domiciled parties must be represented at the USPTO by an attorney who is licensed to practice law in the United States. This means an attorney in active membership and in good standing of a bar of the highest court of a U.S. state, commonwealth or territory. A statement attesting to this will be required with any electronic submission. For more information, please visit the USPTO webpage.

Whom the Rule Applies To
A “foreign-domiciled” trademark applicant, registrant or party is either or both:

  • An individual with a permanent legal residence outside the United States or its territories.
  • An entity with its principal place of business (headquarters) outside the United States or its territories.

A goal of the new Rule is to make sure that the applied-for trademarks and service marks accurately reflect marks that are actually in use, or intended to be in use, in commerce in the U.S. As stated in the Rule, “The public relies on the register to determine whether a chosen mark is available for use or registration. When a person's search of the register discloses a potentially confusingly similar mark, that person may incur a variety of resulting costs and burdens, such as those associated with investigating the actual use of the disclosed mark to assess any conflict, initiating proceedings to cancel the registration or oppose the application of the disclosed mark, engaging in civil litigation to resolve a dispute over the mark, or choosing a different mark and changing business plans regarding its mark. In addition, such persons may incur costs and burdens unnecessarily if the disclosed registered mark is not actually in use in U.S. commerce, or is not in use in commerce in connection with all the goods/services identified in the registration. An accurate and reliable trademark register helps avoid such needless costs and burdens.”

Therefore, the Rule should aid in reducing costs and providing more accurate information for trademark owners, and should provide greater protection for Iowa businesses. This will allow businesses to have greater faith in the USPTO in vetting trademarks and ensuring that registered marks are recognized as having the value given to them by the consumers. In summary, this Rule will ensure that when a client or consumer sees a mark owned by an Iowa company, they know that the product or service is backed by the high integrity of the company.

Luke T. Mohrhauser is an intellectual property attorney at McKee, Voorhees & Sease, PLC, an intellectual property law firm located in Des Moines, Iowa. Luke's practice focuses mainly on patent prosecution in the mechanical, electrical, software and business method arts. Contact Luke with questions or for more information.