A look at the law directed to foreign trademark applicants

On Behalf of | Sep 24, 2020 | Trademarks |

The need for protecting intellectual property rights extends to foreign applicants wishing to register trademarks in the United States.

A new 2019 law has changed the procedure for this kind of registration.

A little history

The importance of intellectual property rights continues to increase everywhere in the world. Intellectual property includes trademarks, copyrights, patents and know-how as well as trade secrets, company database information and much more. In the case of trademark registration requested by a foreign applicant, a law that became effective on August 3, 2019, seeks to improve the process.

About the new requirement

In perhaps the most significant policy change in decades, the United States Patent and Trademark Office or USPTO has amended:

  • The Rules of Practice in Trademark Cases
  • The Rules of Practice in Filings Pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks
  • The rules pertaining to the Representation of Others Before the United States Patent and Trademark Office

What this means is that in order to register a trademark in this country, the USPTO now requires foreign applicants to have the representation of an attorney who is “an active member in good standing” of the bar in the U.S.

Intended consequences

Knowing that a search for a registered trademark can lead to the confusion of finding a similar mark, further investigation could be costly, including the possibility of having to settle a dispute over the mark through litigation. With the passage of the new 2019 law, the USPTO hopes to avoid such problems, reduce costs to applicants and instill greater confidence in consumers.