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USPTO Ruling to affect Non-Resident Trade Mark Participants from August 3

3 July 2019

The United States Patent and Trademarks Office (USPTO) has issued a ruling which affects all non-resident trade mark participants.

When does the Ruling take effect?

The Ruling takes effect on 3 August 2019 and applies to all filings and proceedings on or after that date.

Who is affected?

According to the USPTO, the ruling affect all participants in the US trade mark system, including trade mark applicants and trade mark opponents, whose legal address is not within the United States.

The ruling will also affect non-resident owners of currently registered trade marks who need to file maintenance actions, such as a trade mark renewal or Declaration of Use.

What is the effect of the Ruling?

The ruling requires all non-resident participants to appoint a US-approved attorney for all dealings before the USPTO or the TTAB (Trademark Trial and Appeal Board).

Appointed attorneys will also have to provide additional information to the USPTO to be granted standing.

The result of the Ruling is to effectively end the ability of non-resident participants to represent themselves in United States trade mark proceedings.

How does this affect Madrid Protocol applicants?

The ruling also affects applicants designating the United States under a Madrid Protocol application.

Foreign applicants will still be permitted to file under the Madrid Protocol without a US attorney, however, if an Office Action is issued by the USPTO or the application is opposed by a third-party, the applicant will then be required to appoint an approved US attorney.

More Information

You can read the USPTO's announcement here. The USPTO has also released detailed information. The full text of the Ruling is also available here.

Brisbane intellectual property lawyers, Xuveo Legal, can provide assistance and advice when applying for registration of trade marks in Australia and overseas.

This post is intended for general information only and is not intended to constitute legal advice. You should obtain appropriate professional advice for your circumstances or contact us for further assistance.

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