July 16, 2019 – The U.S. Patent and Trademark Office (USPTO) has published a new rule that will have a major impact on foreign (non-U.S. domiciled) trademark applicants, registrants, and parties in inter partes proceedings in the Trademark Trial and Appeal Board (TTAB) when it becomes effective on August 3, 2019.
In essence, all such applicants and registrants, including parties in the TTAB, will no longer be able to act on their own behalf (“pro se”) but will now need to be represented before the USPTO by a U.S. attorney admitted to the bar in any U.S. state, commonwealth, territory, or the District of Columbia. Moreover, such U.S. attorneys must submit proof to the USPTO that they are admitted and are in good standing.
At the same time, Canadian counsel can no longer act as primary counsel although they can continue as secondary counsel for Canadian clients.
This rule tightens the current representation practice and hopes to stop the current instances of the unlicensed practice of law before the USPTO, including use of fraudulent “U.S.” appearing contact information (or contact information copied from legitimate U.S. law firms), or false pro se claims by foreign companies and individuals.
Failure to comply with this rule, the USPTO said, may affect the validity of the trademark applications, registrations, and proceedings targeted.