USPTO releases new rules for non-US domiciled TM applicants

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

USPTO releases new rules for non-US domiciled TM applicants

uspto thumb

Non-US domiciled trademark applicants, registrants and parties to Trademark Trial and Appeal Board proceedings will have to be represented by a US-qualified lawyer

uspto

The new rules were announced on July 2 and will come into force on August 3. 

According to the USPTO, the rules will help safeguard the "accuracy and integrity" of its trademark register. 

It also pointed out that other trademark offices require foreign-domiciled applicants to use local representation for filing. 

“Many other countries worldwide have had this requirement for decades,” said USPTO commissioner for trademarks, Mary Boney Denison, in a press release.

The office has published guidance notes on who will be classed as 'foreign-domiciled', the information a US attorney/lawyer must provide to satisfy the new rules, and the position of Canadian patent and trademark attorneys/agents. The guidance notes and likely questions concerning the rules can be found here.


The USPTO also addressed some concerns, such as the costs of appointing a US attorney and Madrid System applications, highlighted during the consultation period (see the official rule document published in the Federal Register). 


Previous Managing IP coverage on this issue can be found here and here

more from across site and SHARED ros bottom lb

More from across our site

Deborah Kirk discusses why IP and technology have become central pillars in transactions and explains why clients need practically minded lawyers
IP STARS, Managing IP’s accreditation title, reveals its latest rankings for patent work, including which firms are moving up
Leaders at US law firms explain what attorneys can learn from AI cases involving Meta and Anthropic, and why the outcomes could guide litigation strategies
Attorneys reveal the trademark and copyright trends they’ve noticed within the first half of 2025
Senior leaders at TE Connectivity and Clarivate explain how they see the future of innovation
A new action filed by Nokia against Asus and a landmark ruling on counterfeits by South Africa’s Supreme Court were also among the top talking points
Counsel explain how they’re navigating patent prosecution matters and highlight key takeaways from Federal Circuit cases
A partner who joined Fenwick alongside two others explains what drew her to the firm and her hopes for growth in Boston
The England and Wales High Court has granted Kirkland & Ellis client Samsung interim declaratory relief in its ongoing FRAND dispute with ZTE
A UDRP decision that found in favour of a small business in a domain name dispute could encourage more businesses to take a stand in ‘David v Goliath’ cases
Gift this article