On August 3rd, 2019, the United States Patent and Trademark Function implemented a dominion requiring foreign companies and individuals domiciledexteriorof the Us to employ a licensed U.S. chaser to file trademark applications, renewals, and virtually any other document before the USPTO. This affects every visitor and individual exterior of the U.S., but it tin can be particularly unexpected to trademark applicants and owners who might have filed without an attorney in the by.

Here is an overview of the new rule:

  • The USPTO requires foreign applicants (whose dwelling house or main place of business is non located within the U.S. or its territories) to be represented past licensed U.S. counsel or, in express cases, an authorized strange attorney (i.e. registered Canadian agent)
  • This dominion applies to all filings before the USPTO, including applications, Office Action responses, "proof of commercial utilize" filings, Priority Actions, Examiner'due south Amendments, renewals, assignments, Petitions to the Director, and even simple accost changes
  • Applicants flagged under this rule will exist issued an Function Action requiring the appointment of U.Due south. counsel within six months of the issuance of the Office Action

Here are the exceptions to the new rule:

  • Foreign citizens domiciled in the United States may still file without an attorney, merely must be prepared to showproofof being 'legally domiciled' in the U.S.
  • Foreign companies with U.Due south. headquarters may even so file without an chaser, but, again, must be prepared to evidence it.
  • The new rule would also utilize to Madrid Protocol applications (likewise known every bit Section 66 applications.) However, the Madrid Protocol filing system does not currently include a method for appointing counsel through the online forms, and then the USPTO volition temporarily allow Madrid Protocol applications that otherwise would not require further examination to continue without a U.S. attorney until the international forms are updated.
  • Authorized Canadian agents will still be allowed to prosecute applications for Canadian citizens, merely must engage U.S. counsel equally their domestic representative

There are also some questions that you might have – here are a few of the most mutual questions we receive:

I am an international visitor with headquarters in Europe and I already registered my trademark. Do I yet need to hire a U.S. attorney?

Your trademark registration will remain valid without appointing a U.South. attorney. Nevertheless, you will be unable to file any maintenance documents, including renewals, address changes, name changes, or assignments of rights without hiring a U.S. chaser. Chances are, an experience U.Southward. trademark chaser can help counsel youbeyondyour registration in different means to strengthen your legal protection.

I am a foreign citizen living outside of the U.S. and I just filed my application by myself. Is my awarding void or invalid?

If the dominion applies to you lot and you lot file without a U.S. attorney, you will be given the opportunity to engage counsel to correspond yous. This requirement will exist issued in an "Office Activity," and you will have (currently) vi months to appoint a U.South. attorney. If you lot don't respond, nonetheless, then the application will carelessness.

This is a uncomplicated form to file out – why are y'all charging a legal fee?

Trademark registration is much more than than simply filling out a form. There are dozens of legal decisions that have to be madebefore the application is even filed, then many more than over the course of the application process and the life of the trademark registration. Each of the decisions is of import and may change the scope or strength of your protection. An experienced trademark attorney can wait at your entire business and accept that into business relationship when helping to counsel you lot on which strategy to utilise to protect your IP.

Beware of Quasi-Attorney Online Filings Services

As a result of this policy change, many new or inexperienced attorneys are attempting to take advantage of the policy and offering ultra-low-cost filings. Trademark applicants accept these depression-cost offers at their own chance – typically this ways little to no review of the awarding, strategy, or other important considerations are taking place and many of the attorneys offering these kinds of services accept very petty feel in trademark law. When you rent an attorney, you should consider an attorney with the feel and knowledge to provide individualized and specialized advice for your business organization and your industry. If the attorney you rent is but filling out a class for y'all to submit, this likely does not see the minimal review necessary to ensure your trademark is protected. All services are different, merely trademark applicants should exist wary of these types of services and should talk to their attorney about his or her feel and level of knowledge in the field of trademarks.