New U.S. Rule to Require Foreign Trademark Applicants to Hire U.S. Attorneys
If you wish to file a new trademark application or maintain/renew an existing trademark registration in the United States, and you are domiciled outside the U.S. (or your company is), you will soon need to hire a U.S.-based attorney to do so. The U.S. Patent and Trademark Office (USPTO) has announced that beginning August 3, applicants domiciled outside the U.S. will be required to designate a U.S.-licensed attorney when filing applications to register trademarks or when maintaining/renewing registrations or when filing matters before the Trademark Trial and Appeal Board.
Why the change? The USPTO says that there has been an increase in inaccurate and possibly fraudulent submissions from applicants outside the U.S., and believes that this new rule will “increase customer compliance with U.S. trademark law and USPTO regulations”, including increasing accuracy in submissions and safeguarding the integrity of the trademark register. This new rule follows on the heels of less drastic measures that the USPTO has taken in recent years, including randomly auditing registrations after Declarations of Use have been filed to verify that the trademark is used with all of the goods/services listed therein, and creating a streamlined procedure for the public to report specimens that appear to be digitally created, altered or fabricated. It will be interesting to see if these new rules and practices have the desired effect.
You can read the USPTO’s announcement here.
If you have questions on this or any other related topics, please contact Laura Winston ator
ABOUT LAURA WINSTON
Laura J. Winston is a principal in the firm’s intellectual property group. Ms. Winston focuses her law practice primarily in the areas of trademarks, copyrights and the internet, representing a broad range of clients from individual business owners and small startup ventures to established Fortune 500 and publicly-traded companies both domestically and abroad. Ms. Winston practiced both at large firms and specialized intellectual property firms, before co-founding an intellectual property boutique firm. Her industry experience covers various industries as diverse as pharmaceuticals and medical devices, print and online publishing, computer-related goods and services, alternative energy, and travel and transportation.
ABOUT OFFIT KURMAN
Offit Kurman is one of the fastest-growing, full-service law firms in the mid-Atlantic region. With over 185 attorneys offering a comprehensive range of services in virtually every legal category, the firm is well positioned to meet the needs of dynamic businesses and the people who own and operate them. Our twelve offices serve individual and corporate clients along the I95 corridor in the Virginia, Washington, DC, Maryland, Delaware, Pennsylvania, New Jersey, and New York City regions. At Offit Kurman, we are our clients’ most trusted legal advisors, professionals who help maximize and protect business value and personal wealth. In every interaction, we consistently maintain our clients’ confidence by remaining focused on furthering their objectives and achieving their goals in an efficient manner. Trust, knowledge, confidence—in a partner, that’s perfect.
Find out why Offit Kurman is The Better Way to protect your business, your assets and your family by connecting via our Blog, Facebook, Twitter, Instagram, YouTube, and LinkedIn pages. You can also sign up to receive LawMatters, Offit Kurman’s monthly newsletter covering a diverse selection of legal and corporate thought leadership content.
MARYLAND | PENNSYLVANIA | VIRGINIA | NEW JERSEY | NEW YORK | DELAWARE | WASHINGTON, DC