MANAGING FOREIGN TRADEMARKS WITHIN THE UNITED STATES
At A.H. General Counsel Services, we have corporate clients around the world operating across international borders. We understand better than many how today's global market can necessitate trademark prosecution in the U.S. even when a company is headquartered in another country.
For companies seeking to prosecute their trademark in the United States, it's important they understand that the United States Patent and Trademark Office (USPTO) enacted rule changes in recent years that impact who can legally assist them in filings, trials, and appeals proceedings.
THE IMPACT OF USPTO RULE § 11.14(c) ON FOREIGN TRADEMARK ATTORNEYS
As of August 3, 2019, the United States Patent and Trademark (USPTO) now requires foreign domiciled applicants and registrants to appoint a U.S. attorney on all U.S. trademark filings and Trademark Trial and Appeal Board proceedings. [1] This rule change removes the reciprocal recognition of most foreign patent attorneys and patent agents to practice before the USPTO in trademark matters. As it now stands, only Canadian trademark attorneys and trademark agents are reciprocally recognized before the USPTO under Rule § 11.14(c) to represent applicants, registrants, and parties located in Canada.
Currently, recognized Canadian patent attorneys and agents will continue to be authorized to represent Canadian parties in connection with an application or post-registration maintenance filing, for which they are listed as the representative, which was pending before the USPTO before the effective date of this rule change. Recognized Canadian trademark attorneys and trademark agents continue to be authorized to represent Canadian parties in U.S. trademark matters; however, TEAS Plus applications require designation of a U.S. attorney and a U.S. attorney must file submissions with the USPTO.[2]
WE CAN GUIDE YOU THROUGH THE FOREIGN TRADEMARK PROCESS
Our vastly experienced trademark attorneys have helped our foreign entity clients successfully navigate the trademark application and registration process in the United States. We understand that you may only need assistance within the narrow scope of filing your foreign trademark, or you may want to learn how we can help you manage your long-term trademark goals within the U.S.
Our firm is uniquely modeled to offer clients access partner-level attorneys who've spent years developing U.S. trademark legal solutions that go unparalleled. We are dedicated to helping companies of all sizes and backgrounds develop, maintain, and defend their trademarks in the U.S. and beyond.