New Rules Governing US Trademark Office Representation

A series of revisions punctuated the release of the United States Patent and Trademark Office’s (USPTO) Examination Guide 4-19 (Revised). One of the most important requirements that survived the guide’s revisions concerns the once-reciprocal arrangement allowing Canadian attorneys to file trademark applications with the USPTO. 

Under 4-19, Canadian attorneys can only serve alongside a US attorney:

Canadian patent agents will no longer be authorized to represent Canadian trademark applicants, registrants, or parties before the USPTO in trademark matters. Canadian trademark attorneys and agents will continue, if eligible, to be recognized as additionally appointed practitioners who can represent their Canadian clients, although the USPTO will correspond only with the appointed US-licensed attorney.

This provision is part of a multi-pronged approach to protect the integrity of the registry. Over the last five years, the USPTO had been inundated with trademark applications from abroad, most notably China. In many cases, it was apparent that the submitted specimens were digitally altered or made specious claims.

Other new rules include:

• Requiring all foreign-domiciled applicants to retain a licensed US attorney to correspond with the USPTO.
• The USPTO will no longer send correspondence to post office boxes — applicants in the US must provide a domicile.

Many practitioners from rural areas have objected to the provision regarding post office boxes, citing the fact that in sparsely populated counties there is no delivery to domiciles, only post office boxes. The USPTO has created a means by which applicants can get an exception to the requirement, but the consensus among trademark attorneys is that another revision is likely. Watch this space for more news.

Bill Samuels

PHONE: 212-784-6939

FAX: 212-784-6935