New US Counsel Rule For Foreign TMs Promises Sea Change


This month’s dramatic announcement by the U.S. Patent and Trademark Office that all foreign domiciled trademark applicants, registrants and parties to USPTO trademark proceedings will now be required to retain U.S. counsel is expected to result in the most significant practical change to domestic trademark prosecution practice in years.

For casual observers, this new rule — set to be effective on Aug. 3, 2019 — may have arrived as an unexpected, or even shocking, development. After all, with this announcement, literally tens of thousands of active, foreign-domiciled participants in the trademark processes of the USPTO will suddenly now require representation by a U.S. attorney, altering years of common practice.

Moreover, the time from announcement to implementation — only 32 days — is remarkably short for agency action of any kind, let alone a new rule set to transform the role of trademark practitioners in relation to a massive class of new clients.

Read the full article on Law360.

and This entry was posted in Brand Management, Brand Protection, Foreign, Trademark Portfolio Management, Trademark Prosecution, Trademark Searching.
Date Published: July 19, 2019
Darren S. Cahr counsels clients and litigates disputes relating to intellectual property and marketing practices. For 25 years Darren has helped clients develop and defend their most critical intangible rights, providing daily counsel on brand strategy, marketing law, design rights, transactions, competitive positioning, and the legal implications of new technology. Darren litigates and tries cases in courts and administrative agencies around the country, and serves as co-chair of the firm’s Advertising and Promotions Team.
Melissa S. Dillenbeck counsels her clients on mission critical marketing practices, focusing on trademark portfolio management, brand selection, and advertising and promotion law. Melissa is co-chair of the firm’s Advertising and Promotions Team. She works with companies in a variety of industries, ranging from consumer products to health care, and helps her clients understand the intersection of branding and modern global commerce.