Only U.S. Trademark Lawyers Allowed

In one of the most significant U.S. trademark rule changes ever issued, on July 2, 2019, the United States Patent and Trademark Office (the “USPTO”) announced that foreign businesses may no longer file new trademark applications by themselves or through their non-U.S. counsel. Instead, all such foreign applicants shall be required to engage U.S. trademark lawyers in order to file new trademark applications, to communicate with the USPTO on Office Actions, and to engage in all other trademark proceedings before the USPTO.1

This fundamental change in the USPTO rules will take effect as of August 3, 2019. Currently, foreign businesses are permitted to file trademark applications and take part in trademark prosecution proceedings on their own or with their non-U.S. attorneys. This new rule as
enacted due to the “[i]ncreasing problem of foreign trademark applicants who purportedly are pro se… and who are filing inaccurate and possibly fraudulent submissions that violate the Trademark Act and/or the USPTO’s rules.”