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Insights Insights
| 1 minute read

U.S. Attorney Required for All Foreign-Domiciled Trademark Filers

The U.S. Patent and Trademark Office (USPTO) recently announced that, starting on August 3, 2019, all foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board (TTAB) proceedings must be represented by a licensed U.S. attorney.

The new rule applies to all trademark applicants, registrants, and parties whose permanent legal residence (for individuals) or principal place of business (for business entities) is not within the United States or its territories. It applies to ALL prosecution and contested filings after the August 3 effective date, including (1) new application fillings, responses to office actions, and all post-registration maintenance filings at the USPTO, and (2) oppositions, cancellations, and appeals before the TTAB.

For applications under the Madrid Protocol, the USPTO currently takes a lenient approach due to the lack of a mechanism at the International Bureau of the World Intellectual Property Organization by which a U.S. attorney may be designated. Thus, for the time being, the USPTO will waive the U.S. attorney requirement regarding any initial request for extension of protection to the U.S. under the Madrid Protocol. However, it will require representation of a licensed U.S. attorney for all subsequent responses, if any, to the USPTO on that application.


新规适用于所有永久合法住所(如果是自然人)或主要营业地点(如果是商业主体)在美国境外的申请人、注册人和当事人。其适用范围也涵盖商标申请的所有事宜和在美国商标审判和上诉委员会诉讼的所有事宜,包括 (1)新的商标申请,回复审查意见(若申请已在新规生效前递交),以及对注册商标后续的维护和续展;(2)商标异议,申请无效,以及针对审查意见向美国商标审判和上诉委员上诉等等。




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