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

IP lawyers at three firms reflect on how courts across Australia have reacted to AI use in litigation, and explain why they support measured use of the technology
AJ Park’s owner, IPH, announced earlier this week that Steve Mitchell will take the reins of the New Zealand-based firm in January
Chris Adamson and Milli Bouri of Adamson & Partners join us to discuss IP market trends and what law firm and in-house clients are looking for
Noemi Parrotta, chair of the European subcommittee within INTA's International Amicus Committee, explains why the General Court’s decision in the Iceland case could make it impossible to protect country names as trademarks
Inès Garlantezec, who became principal of the firm’s Luxembourg office earlier this year, discusses what's been keeping her busy, including settling a long-running case
In the sixth episode of a podcast series celebrating the tenth anniversary of IP Inclusive, we discuss IP Futures, a network for early-career stage IP professionals
Rachel Cohen has reunited with her former colleagues to strengthen Weil’s IP litigation and strategy work
McKool Smith’s Jennifer Truelove explains how a joint effort between her firm and Irell & Manella secured a win for their client against Samsung
Tilleke & Gibbins topped the leaderboard with four awards across the region, while Anand & Anand and Kim & Chang emerged as outstanding domestic firms
News of a new addition to Via LA’s Qi wireless charging patent pool, and potential fee increases at the UKIPO were also among the top talking points
Gift this article