U.S. Patent and Trademark Office Releases New Rules: Foreign Applicants and Registrants Need to Appoint U.S. Practicing Lawyers to Represent Trademark Business

On July 2, the U.S. Patent and Trademark Office in Washington (The United States Patent and Trademark Office,USPTO) issued a new trademark rule that all foreign applicants, registrants, and parties to trademark negotiation and appeal board proceedings must appoint aA practicing U.S. attorney represents his trademark business. This new rule applies to trademark applicants, registrants, and parties whose permanent legal residence or principal place of business is outside the United States. They need to appoint a U.S. attorney to represent them in all patent matters in the U.S. Patent and Trademark Office. In addition, before acting in patent matters, the U.S. attorney must certify that he is a member of the American Bar Association and in good standing, and provide bar association membership information. The effective date of this new regulation isAugust 3, 2019.

Under-Secretary-General and Director-General for Intellectual Property, United States Patent and Trademark OfficeAndrei IancuSaid:"Businesses make important legal decisions about their brands through U.S. trademark registrations. In order to maintain the accuracy and integrity of the registration, and for the benefit of all users, the U.S. Patent and Trademark Office must have appropriate means to enforce compliance by all applicants and registrants, an important step in the fight against fraudulent filings." Trademark CommissionerMary Boney DenisonSaid:"Many other countries around the world have had regulations like this for decades. We believe this new regulation will help the quality of applications..”

Trademark is a regional intellectual property right. Many countries make relevant provisions for overseas organizations or individuals to apply for their domestic trademarks and other businesses, which must be represented by domestic organizations. China's Trademark Law, No.Article 18 provides that"Foreigners or foreign enterprises that apply for trademark registration and handle other trademark matters in China shall entrust a trademark agency established according to law to handle the matter."Article 3 of the Regulations for the Implementation of the Trademark Law stipulates that"Foreigners or foreign enterprises that apply for trademark registration or handle other trademark matters in China shall be represented by an organization designated by the State Administration for Industry and Commerce.” 

After this new rule comes into effect,ForForeign applicants andThe registrant is in the United States Patent and Trademark Office.Application for trademarkbusiness such as trademark negotiation,All require the appointment of a licensed U.S. attorney,will increaseForeign applicants andFinancial burden and time cost to the registrant.

Organizations and individuals outside the United States want to obtain a registered trademark in the United States. In addition to entrusting a practicing lawyer in the United States to apply to the United States Patent and Trademark Office, another way is through the international registration of Madrid trademarks, that is, in accordance with the Madrid Agreement or the Madrid Agreement. According to the provisions of the Protocol, trademark registration between the parties to the Madrid Union. The Madrid registration application must meet three conditions: subject qualification, corresponding domestic application or registration basis, and the destination country of the planned registration protection belongs to the Madrid Contracting Party. Both China and the United States are parties to Madrid. Therefore, if Chinese enterprises want to obtain registered trademarks in the United States, they can choose these two ways according to their own conditions.