New USPTO rule demands US Licensed Attorney for Foreign Trademark Registration Process

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The United States Patent and Trademark Office (USPTO) recently announced a major change in the rules for applying for foreign trademark registration in the country. The change establishes  that all foreign trademark applicants must be represented by a US licensed attorney.

Pedro Drummond, a US licensed lawyer and partner at Drummond Advisors, says this decision will help improve the quality of registration applications and streamline processes. “Many countries have had this requirement for decades, it is natural and necessary for the United States to impose rules for control,” he added.

The rule applies to permanent legal individuals requesting registration outside the United States or its territories — including Canadian applications — or an entity whose main place of business (its headquarters) is outside the US or its territories.

Second largest office

Data from the World Intellectual Property Organization (WIPO) defines the US as the world’s second largest trademark and patent office, behind only China. The most up-to-date WIPO data shows that in 2017 alone, the United States received 607,000 patent applications and nearly 614,000 trademark applications.

“With each passing day, the USPTO will need to accelerate trademark registration processes given the number of orders it receives each year. Filing foreign trademark applications that do not meet the rules delays the USPTO registration system, it is not feasible for the country. A licensed attorney who already knows the requirements will be able to assist each submission and avoid such conflicts,” concluded Pedro.

According to the USPTO official website, the implementation of the new rule is intended to ensure compliance of all registrants in order to avoid filing inaccurate or fraudulent applications that do not comply with US trademark law or UPSTO rules.