USPTO releases new rules for non-US domiciled TM applicants
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

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 ros bottom lb

More from across our site

AI
Tennessee has passed the ELVIS Act, a law that fights against AI models that mimic the voice and likeness of music artists
Rob Stien, chief communications and public policy officer at InterDigital, says the EU has forgotten innovators while trying to solve an issue that doesn’t exist
As Australia’s Qantm IP leans towards being acquired by a private equity company, sources discuss what it could mean for IP firms
Law firms that are conscious of their role in society are more likely to win work, according to a survey of over 23,000 in-house professionals
Nghiem Xuan Bac Pham, managing partner of Vision & Associates, discusses opportunities created by the US-China rift as well as profitability issues facing IP practices
Douglas Leite and two of his colleagues were intrigued by Bhering Advogados’s mission to grow its patent litigation practice
Each week Managing IP speaks to a different IP practitioner about their life and career
Counsel explain how pricing flexibility, patent agents and being business partners can help them maintain profitable patent prosecution practices
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Speakers at an INTA event weighed in on why firms should create AI use policies and how they stay on top of the latest developments
Gift this article