US Counsel Rule Requires All Foreign Applicants To Use A US Trademark Attorney

Over the past year, the United States Trademark Office (“USPTO”) has been inundated with many fraudulent trademark applications. These filings often include made-up specimens and/or include fraudulent intentions to use the goods/services within the United States. To combat this problem, the USPTO­ attempted to create task forces to address the fraud, yet the issues continued and were blatant. The problem is so prevalent that recently, the issue was discussed in Congress. In response to fraudulent specimens that could possibly threaten the efficacy of the U.S. trademark system, the USPTO proposed a­ Federal Rule called the U.S. Counsel Rule. This rule is expected to be implemented within the next few days.

 The U.S. Counsel Rule will require applicants with a foreign domicile to utilize a U.S. attorney to file a U.S. trademark. The rule will not be based upon citizenship. Basically, if you are a U.S. citizen that lives in France, your trademark application will require a U.S. attorney.

The rule will likely apply in unique circumstances. For instance, if a foreign applicant applied without a U.S. attorney, you could get away with no U.S. attorney, if your mark was well-written and had no procedural or substantive problems. Any pitfall in a filed U.S. trademark, may require hiring a licensed U.S. attorney. Basically, the terrain has changed in filing U.S. trademarks- most future applications, including Madrid applications, will now require a licensed U.S. trademark attorney.

The USPTO is aware of attempts to circumvent the newly proposed rule:

There are reports that at least one person has already tried to undermine the U.S. Counsel Rule before it’s even implemented. In fact, the USPTO website describes an attorney who attempted to contact U.S. attorneys to “use” their bar membership to fraudulently file U.S. trademark applications. The USPTO warns that any attorney who allows a foreign applicant to “borrow” their bar membership will be subject to consequences.

 To find the rule/regulation, Please follow this link:

https://www.uspto.gov/learning-and-resources/federal-register-notices/federal-register-notices-2019.

 If you need an attorney, please contact the TrademarkPassport.com website to find a qualified trademark attorneys firm.