Earlier this summer, the United States Patent and Trademark Office (USPTO) announced that as of August 3, 2019, all foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board (TTAB) proceedings must be represented by an attorney who is licensed to practice in the United States. This will apply to all trademark applicants, registrants, and parties whose permanent legal residence or principal place of business is outside the United States. These parties must all utilize a U.S.-licensed attorney to represent them in all USPTO trademark matters.
In addition, the USPTO will require that all U.S.-licensed attorneys who represent anyone before the USPTO in trademark matters must confirm that they are an active member in good standing of their bar, and must provide their bar membership information. According to the director of the USPTO, Andrei Iancu:
Businesses rely on the U.S. trademark register to make important legal decisions about their brands. In order to maintain the accuracy and integrity of the register, for the benefit of all its users, the USPTO must have the appropriate tools to enforce compliance by all applicants and registrants. This rule is a significant step in combatting fraudulent submissions.”
It is likely that requiring a U.S.-licensed attorney in all trademark matters will also streamline the prosecution process, and will ensure that applicants are represented by a party who is familiar with U.S. trademark law. This will hopefully result in an improvement to the quality of trademark application submissions. This rule change should come as no surprise to those practicing in the space, since many other countries require a domestic attorney to represent foreign applicants.
Beginning August 3rd, pursuant to this rule, Canadian patent agents are no longer be authorized to represent Canadian trademark applicants, registrants, or parties before the USPTO in trademark matters. However, Canadian trademark attorneys and agents will continue, if eligible, to be recognized as able to represent their Canadian clients, although the USPTO will correspond only with the appointed U.S.-licensed attorney.
This change is significant for foreign companies looking to protect their brands, and we recommend speaking with a U.S.-based trademark attorney now to prepare for this transition.
This rule change will impact foreign cannabis companies seeking to protect their marks in the United States, where trademark protection for cannabis-related marks is extremely limited. Utilizing a foreign filing as the basis for your U.S. application where that foreign registration encompasses goods or services that are illegal in the U.S. won’t fly, and so foreign companies must strategize as to what goods and services they can legally sell and protect in the United States. A U.S. trademark attorney with experience in the cannabis space can help foreign countries develop an intellectual protection strategy for the U.S., and can help secure trademark protection to the extent possible.
Even if your foreign company filed its trademark applications prior to the rule change, you will need a U.S.-licensed attorney to handle all future correspondence with the USPTO. Now that this rule change is in effect, all foreign cannabis companies seeking or holding trademark protection in the U.S. should secure an experienced U.S. trademark attorney to facilitate the trademark prosecution process.