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Foreign Domiciled Trademark Applicants take Note, you need a US Licensed Attorney!

Posted by Dragan Dan Ivetić | Mar 31, 2024 | 0 Comments

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Are you a non-US domiciled Applicant for a US Trademark?

Foreign Domiciled Trademark Applicants take Note, you need a US Licensed Attorney!

For many individuals or organizations based outside the United States of America looking to protect their brand, a United States trademark is a very good option. In fact, a significant percentage of new trademark applications come from outside the United States each year (in 2017, about 26% of all applications were made by non-US applicants). Whereas historically, almost 1/2 of those applications were made pro se (without the assistance of a lawyer), that is no longer an option. A few years ago, significant changes in the law were enacted and demand attention. The United States Patent and Trademark Office (USPTO) has made it mandatory for all foreign-domiciled trademark applicants to be represented by a U.S.-licensed attorney. This vital amendment, termed the "Representation of Others Before the USPTO" rule, came into force on August 3, 2019. The rule influences not just new filings but also the renewal and management of existing marks. This directive is a result of concerns about application accuracy and fraudulent filings. The implications are substantial, and if you're affected, understanding the changes and how to comply is crucial, whether you are filing a new application or trying to keep an existing one. Here's what you need to know:

Understanding the New Rules for Foreign Trademark Applicants

The Rule Change

One of the most significant changes for foreign-domiciled applicants is the universal requirement for legal representation from a U.S.-licensed attorney throughout the trademark registration process. This includes filing an application, responding to Office actions, registration maintenance, and any other communication with the USPTO. This change aims to enhance the accuracy and integrity of trademark filings and reduce the number of fraudulent applications. It also ensures that foreign applicants have a better understanding of U.S. trademark laws and procedures.

Who is Affected?

All trademark applicants who are not domiciled within the United States are required to hire a U.S.-licensed attorney. This includes both individuals and entities, such as corporations, partnerships, and associations. However, there are a few exceptions to the rule. For example, Canadian trademark attorneys who are in good standing with their professional organization may represent Canadian applicants under certain circumstances.

Why is Legal Representation Important?

Having a U.S.-licensed attorney representing you throughout the trademark registration process can significantly increase your chances of success. Such attorneys are well-versed in U.S. trademark laws and procedures and can provide valuable guidance to ensure that your application meets all necessary requirements. They can also assist with responding to Office actions, navigating potential conflicts, and maintaining your registration throughout its lifespan.

How to Find a Qualified Attorney

When looking for a U.S.-licensed attorney to assist and represent you before the United States Patent and Trademark Office, it is essential to do your research and choose someone who is not only licensed but also experienced in trademark law. You can search for attorneys by referring to the Internet or bar associations. Be sure to interview the attorney and ask them about the process so that you understand exactly what services they will offer and at what cost.

Let's explore some final tips for choosing the right U.S.-licensed attorney:

  • Look for an attorney with experience specifically in trademark law, rather than just general legal practice.
  • Discuss fees and payment options upfront to ensure transparency and avoid any surprises.
  • Make sure the attorney is responsive, communicative, and willing to answer any questions or concerns you may have throughout the process.
  • Consider hiring an attorney with experience working with clients in your specific industry or field. They may have a better understanding of your needs and be able to provide a more customized solution to your needs.

The Rationale

The USPTO insists on legal representation to ensure the accuracy and integrity of the trademark register. With cases of irregularities and false submissions on the rise, the 2019 Rule is a concerted effort to improve application submissions, ensure adherence to U.S. trademark laws, and safeguard the rights of legitimate trademark holders.

Impact on Applications

The most critical change for foreign, non-US domiciled applicants is to have a US Trademark Attorney handle their applications. This includes drafting and submitting the application to the USPTO and prosecuting the same, responding to any examination reports, and generally navigating the complex process on your behalf. It is, essentially, a legal requirement to begin your trademark application if you are not US-domiciled.

The US-Based Domicile Requirement

The USPTO uses the domicile of the applicant to enforce the new rule. To qualify as a U.S.-domiciled individual for trademark purposes, you must be living in the U.S. when the declaration is signed, or a qualified individual with designated powers of attorney within U.S. territories.

How to Comply with the New US Trademark Rules

Hiring a U.S.-Licensed Attorney

The first and most crucial step for any foreign-domiciled individual or entity is to engage the services of a U.S.-licensed attorney with trademark experience. This representative will act as your liaison and advocate with the USPTO to ensure your application meets all legal and procedural requirements.

Application Process with US Attorney

Your attorney will apply on your behalf, communicate with the USPTO regarding any issues that arise, and represent you in any legal proceedings. They will also advise on your mark's protectability and help you craft a strategy to maximize the value of your trademark rights.

The Role of the US Attorney

Your attorney's role is to be not just a representative but a partner in your trademark's success, providing insights into the U.S. legal framework, industry trends, and potential oppositions to your mark. With a finger on the pulse of the IP landscape, your attorney is an indispensable guide. Together with your attorney, you can come up with a sound strategy for protecting your brand in accordance with all aspects of US trademark laws.

Costs and Considerations

The requirement for an attorney may seem daunting, particularly given concerns about costs. However, many U.S.-based law firms and attorneys offer flat-fee structures or competitive rates to represent foreign entities. The cost of upfront legal advice is an investment in the value and security of your trademark rights.

Leveraging Professional Support for Your US Trademark

Finding the Right Attorney

Selecting the right attorney is a decision that can have far-reaching effects on your trademark rights. Look for a lawyer or a firm with a strong track record of international trademark services, experience in your industry, and a clear understanding of your brand's unique value proposition.

The Application Process

The trademark application process can be intricate and time-consuming. By employing skilled legal counsel, you streamline the experience and access professional expertise to protect your intellectual property effectively.

Navigating Renewals and Maintenance

Trademark rights require vigilant management. From renewal filings to proper use and marking, an experienced attorney will guide you in maintaining your trademark properly to protect it from challenges and maintain its enforceability.

Why Experienced Help Matters

Inexperienced or unqualified representation can lead to errors that delay or jeopardize your application. By choosing experienced counsel, you minimize these risks and ensure that every aspect of your trademark strategy aligns with the law.

Case Study - Our Firm's Experience with Non-US Domiciled Trademark Applicants

Our firm offers a comprehensive suite of services for both US-based and non-US-domiciled applicants seeking U.S. trademark protection. Leveraging our deep understanding of the evolving IP landscape, we've successfully navigated the complexities and nuances of the trademark registration process for numerous clients. Our experience with non-US domiciled applicants allows us to anticipate and address common challenges and provide tailored solutions that meet our clients' unique needs.

International Trademark Services

We understand the importance of global brand protection and offer a range of international trademark services. These services include filing applications through the Madrid Protocol System, representing clients in opposition proceedings before the World Intellectual Property Organization (WIPO), and providing guidance on foreign filing strategies. With a network of trusted associates in countries around the world, we can assist with trademark protection on a global scale.

Success Stories

Several of our clients have achieved their trademark goals using our services. By providing individualized support and strategic advice tailored to their unique circumstances, we've helped businesses of all sizes seek and secure their trademarks and manage their brand portfolios effectively.

The Benefits of Professional Assistance

Professional assistance from a dedicated U.S. trademark attorney simplifies the process, ensuring that each client's trademarks receive the personalized attention they deserve. Our clients have noted the peace of mind that comes from having seasoned professionals advocating for their intellectual property rights.


The recently enacted 2019 rule requiring foreign applicants to hire a U.S.-licensed attorney reflects the USPTO's dedication to protecting the accuracy and integrity of the trademark registration process. This rule aims to ensure that all applicants, regardless of their location, have fair and equal access to legal representation throughout the application process. In turn, this will help maintain the overall quality and consistency of trademarks registered in the United States. As a foreign applicant, it is crucial to understand and comply with this rule in order to successfully protect your trademark in the United States. By hiring a qualified U.S.-licensed attorney, you can navigate the complexities of the trademark application process and increase your chances of success in securing a registration. Remember to do your research and choose an attorney who is knowledgeable, experienced, and dedicated to protecting your rights as a trademark owner. With proper guidance and representation from a qualified attorney, you can confidently protect your brand and establish a strong presence in the U.S. market.

How We Can Help You

Our commitment to excellence and comprehensive services cover every aspect of U.S. trademark law. Whether you're filing a new application, responding to an Office action, or maintaining an existing registration, our team can provide the support you need.

For non-US domiciled entities seeking U.S. trademarks, compliance with the USPTO's rules is not just a legal necessity—it's a strategic imperative. By engaging the services of a U.S.-licensed attorney, you ensure that your trademark is handled with the expertise and care it warrants. Don't take chances with your intellectual property. Be proactive and secure the assistance you need to protect your brand. In a world where trademarks are a gateway to global commerce, working within the system is the most effective way to safeguard your business's future.

Our office stands ready to assist you if you need a consultation about filing a US trademark.

Contact us for a free initial consultation!

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About the Author

Dragan Dan Ivetić

DRAGAN DAN IVETIĆ was born and raised in the Chicago suburbs, and wanted to become an attorney to help people from a young age.  He received a bachelor's d...


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