Trade Compliance

GHY discusses changes to international trade regulations and explores cutting-edge compliance strategies.

New Trademark Rule Requires Canadian Firms to Have US-Licensed Attorney

Posted July 08, 2019


In accordance with new regulations proposed earlier this year by the administration to combat fraud, increase compliance, and safeguard the integrity of the U.S. Trademark Register, effective August 3, 2019, all foreign-based companies dealing with government-related trademark issues to be represented by a U.S. licensed attorney.
US Patent & Trademark Office
The move comes after the U.S. Patent and Trademark Office tracked a steady rise in recent years in the number of inaccurate and/or fraudulent submissions by foreign applicants acting on their own behalf. The USPTO estimates number of such submissions to be in the tens of thousands and states that all efforts to rectify the problem by means of education and/or penalization have proven ineffective.

What This Means to Canadian Companies

The new rule requires that all foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings, including Canadian trademark filers, must be represented at the USPTO by an attorney who is licensed to practice law in the United States.

Accordingly, 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 U.S.-licensed attorney.

Non-Compliance

If an application is filed without complying with this new rule, the USPTO will issue an Office Action that appointment of a qualified US Attorney is required. The Applicant will have six months to respond and comply. Failure to comply will result in the abandonment of the application.

Third-parties who submit letters of protest regarding pending applications are not subject to the requirement of this rule to appoint U.s. counsel.

Trademarks and U.S. Customs & Border Protection

CBP maintains a database for trademarks that have been registered at the USPTO. To ensure enforcement of their intellectual property rights and help prevent the importation of infringing goods, trademark owners must register their marks with CBP and pay a fee of $190 per each “e-Recordation” of the trademark. This registration is valid for as long as that issued by the USPTO remains in force.

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