The 2019 Requirement for Foreign-Domiciled Trademark Applicants: Understanding the Need for U.S. Licensed Attorneys

In 2019, the United States Patent and Trademark Office (USPTO) implemented a significant change affecting trademark applicants and registrants outside the United States. The requirement mandates that all foreign-domiciled trademark applicants and registrants must be represented by a U.S. licensed attorney. This shift in policy has important implications for trademark attorneys practicing internationally, as it impacts the way they assist their clients in protecting their intellectual property rights in the United States.

This requirement was introduced to enhance the quality and integrity of the U.S. trademark system. By necessitating representation by U.S. licensed attorneys, the USPTO aims to ensure that foreign applicants and registrants have access to experienced professionals who understand the nuances of U.S. trademark law and can effectively navigate the registration process. This helps safeguard the interests of both domestic and foreign businesses operating in the United States by maintaining the accuracy and legitimacy of trademark registrations.

For trademark attorneys outside the United States, it is crucial to stay informed about this requirement and educate clients who intend to file trademark applications in the U.S. While it may entail an additional step and cost, partnering with a U.S. licensed attorney ensures that your clients receive expert guidance throughout the trademark application process. This change underscores the importance of collaboration and cross-border legal expertise, as well as the need for trademark attorneys worldwide to adapt to evolving regulations to best serve their clients’ interests in an increasingly interconnected global marketplace.

The IP attorneys at Widerman Malek have extensive experience in representing foreign entities in protecting their IP rights in the United States. Additionally, we utilize extensive automation in docketing and communication to minimize the legal costs incurred by our clients, helping them maximize the benefit of their legal budget.

If you are searching for U.S. representation to protect your IP rights, please contact Dan Pierron at dpierron@uslegalteam.com for additional assistance.

Dan Pierron represents clients in the prosecution of patents and trademarks before the United States Patent and Trademark Office. He is a member of both the American Intellectual Property Law Association (AIPLA) and the Intellectual Property Law Association of Florida (IPLAF). He currently serves as an Innovation Council Member and Board of Director on the Economic Development Commission of Florida’s Space Coast (EDC). Dan’s top priority for his clients is licensing their intellectual property and enforcing the intellectual property rights for them in litigation.