Are you filing trademarks in the US legally?

In recent months the USPTO has become concerned about a substantial increase in the number of improper filings of trademark applications which include inaccurate and possibly fraudulent claims of use of the mark. An increasing number of applicants fail to fulfill their legal and ethical obligation to file accurately and in good faith, especially with regard to the claims that the mark is used in commerce.

Tougher requirements for foreign trademark applications

A significant number of these applications have been filed relying on the advice of or using  foreign individuals who lack authorization to practice in the US. Additionally, the USPTO has also seen fraudulent consent agreements and assignments of ownership. Unauthorized foreign practitioners who filed these fraudulent applications cannot be sanctioned by the USPTO for improper filings.

In an attempt to remedy this problem, the USPTO has issued on July 2, 2019 a final rule (Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants, 84 FR 31498) which requires applicants, parties, and registrants who are resident outside the US to be represented by a US attorney in good standing.

This requirement applies to applicants with foreign individuals and US citizens who reside abroad, as well as to companies with headquarters outside the US.

Is a registered US Attorney at Law required for your US Trademark Application?

To qualify as a US resident, applicants must provide documentation that the US address is the applicant’s or registrant’s permanent address or the business headquarters of a juristic entity.  Post office boxes do not qualify as permanent addresses.

Bergenstråhle & Partners’ team of IP professionals includes a registered US Attorney at Law,  member of the California Bar, who can assist non-US residents and companies with their trademark filings and registrations.

The filing is a mere start of a process to get you up and running in the US

In addition to filing and prosecuting trademark applications, Bergenstråhle’s US attorney can also help clients with a number of necessary and commonly needed trademark actions, such as

  • Statements of use in commerce,
  • Audits of post-registration maintenance filings.
  • Third parties’ submissions of evidence that specimens submitted in a pending application have been digitally created or altered, for use in the USPTO Pilot Program.

If the US is an important market for your business, why not get in touch to get a “second opinion” on your trademark process in the US?

Gabriela Tomescu
US Intellectual Property Attorney
Bergenstråhle & Partners



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