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New Rule Requiring Foreign Applicants and Registrants to Have a US-Licensed Attorney

By Jonathan Wachs, Offit Kurman

Effective 03 August 2019, companies and individuals outside the United States that are submitting trademark filings to the United States Patent and Trademark Offce (USPTO) will be required to designate a US-licensed attorney as a contact person for the filing.

This rule will apply to applicants and registrants outside the United States for the purposes of filing new applications, maintaining existing applications or registrations or filing documents for matters before the Trademark Trial and Appeal Board (the administrative court for trademark matters within the USPTO). The USPTO stated in its announcement of the rule that the rule has been adopted to reduce the risk of inaccurate and/or fraudulent submissions from applicants outside the United States. The USPTO also indicated that in recent years in has received an increasing number of such submissions.

If you are counselling clients outside the United States, you should consider contacting a USlicensed attorney to be designated for your clients’ future USPTO trademark filings as and when the need arises. The US licensed attorney can and should add your clients’ marks to its docket to notify your clients (and you, upon request) of upcoming filing deadlines and action items. You can read the USPTO’s announcement here.

If you would like to discuss the new rule from the USPTO or any other trademark protection issue, please do not hesitate to contact the author, Jonathan Wachs, of GGI firm Offit Kurman.

Jonathan Wachs

Jonathan Wachs

Offit Kurman, Baltimore, United States
T: +1 301 575 0302
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Jonathan Wachs provides strategic counseling and operational advice to clients in the areas of intellectual property, commercial transactions and outsourced legal departments. As head of the firm’s Intellectual Property Group, Mr. Wachs works closely with clients to develop, register, analyze, enforce, and transfer intellectual property assets in a customized, cost-efficient, and highly effective manner. Additionally, he conducts intellectual property audits through which clients learn the nature and value of their intellectual property assets and the steps needed to protect such assets from misappropriation or dilution. As a business lawyer, he has successfully negotiated and completed several multimillion dollar business transactions and has served as general counsel to several small and midsize businesses and organizations in various industries and professions. He also manages a blog about intellectual property issues, Friday Factoids. Mr. Wachs co-manages New Paradigm Counsel, a service through which Offit Kurman delivers customized, comprehensive and cost-effective outsourced legal departments. Through New Paradigm Counsel, Jon served as outsourced general counsel for a government contractor, a large printing business, a payment processing company and an identity theft restoration business.

Published: GGI Insider, No. 102, July 2019 l Photo: 1STunningART - stock.adobe.com


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