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Trademark Office Clarifies U.S. Attorney Requirement

Josh Conley \ March 03, 2020

Last month the U.S. Trademark Office removed any ambiguity that may have existed with its new rule that requires foreign entities to use U.S. attorneys when working with the Trademark Office.  

For those unaware, last summer, the Trademark Office announced a new rule requiring any foreign entity to work with a licensed U.S. attorney in order to appear before the Trademark Office. The measure was taken in response to a flood of improper and fraudulent applications that were being filed by foreign entities.

Our neighbor to the North found this out the hard way.  In December of 2019, a Toronto-based company requested that a U.S. trademark be canceled.  The petition for cancellation was filed by Canadian attorney/agent who was under a unique reciprocity between the Canadian Intellectual Property Office and the United States Patent and Trademark Office.  Even though this reciprocal relationship existed, the Trademark Office said that wasn’t enough to fall under the newly adopted rule.  

Rather, “a qualified attorney licensed to practice law in the United States” must be appointed.  The Trademark Office noted that once the U.S. practitioner is in place, the Canadian representative can be appointed in addition to the U.S. attorney, but the reciprocity itself is not enough to satisfy the rule.

The Trademark Office’s decision coincides with other efforts to tighten up and streamline its operations going into 2020.

IPR Attorney, Patent Lawyer, Copyright and Trademarks in Iowa
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