”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.”

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.

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.