New Rule Requires Licensed U.S. Attorney for Non-U.S. Trademark Transactions and Proceedings
From August 3, 2019, all non-U.S. applicants, registrants and parties to Trademark Trial and Appeal Board (TTAB) opposition or cancellation proceedings are required to be represented by a U.S. licensed attorney. By then, the United States Patent and Trademark Office (USPTO) and the Trademark Trial and Appeal Board will stop accepting non-U.S. trademark applicants, registrants, and trademark trial and appeal board litigants to represent themselves in (pro se) relevant proceedings.
The introduction of this strict provision is the U.S. Patent and Trademark Office's response to the recent increase of fraud in trademark applications filed by non-U.S. trademark applicants. In many cases, foreign trademark agents having no qualification for legal representation in the U.S. Many foreign trademark agents produced and submitted false evidence of use for applicants in an attempt to circumvent the requirement in the U.S. trademark law that a trademark generally must be in use to gain registration and be considered valid and enforceable.
The USPTO believes that hiring a qualified U.S. practicing attorney will increase the chances of success for obtaining trademark registrations, improve the quality of trademark applications, and effectively reduce bad faith and fraudulent activities in trademark application proceedings.
The rule is similar to Article 18 of the Chinese Trademark Law: if a foreigner or a foreign enterprise applies for trademark registration and handles other trademark matters in China, it shall entrust a designated Chinese trademark agency organization to act as its agent. In addition, the Chinese Trademark Law also explicitly prohibits the “obtaining of trademark registration through fraudulent activities”.
Quarles & Brady suggests Chinese trademark owners verify the qualifications of attorneys in the United States before entrusting them to file U.S. trademark applications. Since the United States does not have an attorney registration system at the national level, Chinese trademark owners should enlist a U.S. practicing lawyer registered in one or more states as their trademark agent. At the state or state level administrative divisions in the United States, there is a bar association that keeps records and manages the information and practice records of the state's practicing attorneys.
Quarles & Brady has a sophisticated trademark practice, strong expertise in securing trademark registrations before the USPTO, and years of experience defending and enforcing trademark rights in TTAB proceedings. Our Chinese clients appreciate our strategic approach, practical solutions, and Chinese language fluency for excellent communication and client service.
For more information on trademark practices in the U.S., China and other countries, please contact:
- Lori Meddings: (608) 283-2653 / lori.meddings@quarles.com
- Li Zhu : (414) 277-5143 / li.zhu@quarles.com