The USPTO has issued Examination Guide 4-19 (August 2019), entitled “Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants.” (pdf here). Effective August 3, 2019, amended Rule 2.11 requires foreign applicants, registrants, or parties to a trademark proceeding to be represented by a U.S. attorney. Furthermore, the USPTO may require such applicants, registrants, or parties to: (1) furnish information or declarations necessary to the proper determination of whether the applicant, registrant, or party is subject to the requirement for a U.S. attorney, and (2) to state whether assistance was received in a trademark matter before the USPTO and, if so, to disclose the name(s) of the person(s) providing such assistance and whether any compensation was given or charged.
In addition, all applications must include the applicant’s domicile address, and foreign applicants must appoint a U.S. attorney for the application to meet the requirements for a complete application. Foreign applicants submitting an application using the TEAS Plus filing option will be required to designate a U.S. attorney in the application in order to complete the submission of the application.
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TTABlog comment: This new rule applies retroactively to pending TTAB matters. A foreign party will be notified of the requirement to appoint counsel and the case will be suspended pending such appointment.
Text Copyright John L. Welch 2019.