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Amendments to Trademark Laws

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Feb 28, 2019 (Newsletter Issue 3/19)
USA
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Requirement of U.S. Attorney for Foreign TM Applicants Proposed


The United States Patent and Trademark Office (USPTO) published a proposal to change federal trademark law to require foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to use an attorney who is licensed to practice law in the United States (see here).

The requirement applies to trademark applicants, registrants, and parties who have a permanent legal residence or a principal place of business outside the United States. The proposed changes would require these applicants, registrants, and parties to hire an attorney who is licensed to practice law in the United States to represent them at the USPTO.

In addition to the above proposed change, U.S.-licensed attorneys representing anyone before the USPTO in trademark matters would be required to confirm that they are an active member in good standing of their bar and provide their bar membership information.
Any U.S.-licensed attorney who has an active bar membership and is in good standing, regardless of where the attorney resides (including outside the United States), can continue to represent foreign and domestic trademark applicants and registrants at the USPTO.

The USPTO is taking comments from the public on this proposed rule until March 18, 2019. Comments can be forwarded to TMFeedback@uspto.gov.