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.
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