No more DIY in the US for Foreign Trademark Registrations

Courtesy of our friend David Copland, a trademark lawyer based in Dresden, Germany:

Amendments to the Trademark Rules of Practice published in the U.S. Federal Register of July 2, 2019 require as of August 3, 2019 all foreign trademark applicants, registrants, and parties to a TTAB proceeding are required to use a U.S.-licensed attorney for filing any trademark-related submissions to the U.S. Trademark Office.  

Previously all trademark filings could be made directly by a foreign individual, or by a member of a foreign limited corporation, a partner of a foreign partnership, or an officer of a foreign corporation.  Under the prior rules, foreign counsel could “ghost write” filings which foreign trademark owners could submit directly.  This will no longer be possible. 

The Madrid system does not allow for designation of a U.S. attorney for applications submitted through WIPO’s International Bureau.  Consequently, initial applications filed through the Madrid system need not be filed by a U.S.-licensed attorney.  However, any further submissions to the U.S. Trademark Office related to a Madrid application, such as responses to office actions or registration maintenance filings, will require the foreign trademark owner to have a U.S. attorney.

Other than an initial application filed under the Madrid system, foreign trademark owners must be represented by a U.S.-licensed attorney for all U.S. trademark filings after August 3.

For more information see the USPTO Website or give us (or David) a shout.