2019년 8월3일부터 미국특허청(USPTO)은 모든 외국인이 상표 출원, 등록, 심판등 모든 절차를 진행할 때 자격있는 대리인(US-LICENSED ATTORNEY)을 통해 법률행위를 하도록 강제하는 상표규칙(C.F.R. TITEL37)을 발표하였습니다.(관련내용: 아래 내용 참조)
당사는 미국 로펌의 변호사를 통해서 상표출원 및 등록업무를 진행합니다.
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USPTO announces new trademark rule requiring foreign-domiciled applicants and registrants to have a U.S.-licensed attorney July 2, 2019
The United States Patent and Trademark Office (USPTO) today announced a new rule requiring all foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to be represented by an attorney who is licensed to practice law in the United States.

The requirement applies to all trademark applicants, registrants, and parties whose permanent legal residence or principal place of business is outside the United States. These applicants, registrants, and parties are required to have a U.S.-licensed attorney represent them at the USPTO in all trademark matters.

Additionally, U.S.-licensed attorneys representing anyone before the USPTO in trademark matters are required to confirm they are an active member in good standing of their bar and to provide their bar membership information.

“Businesses rely on the U.S. trademark register to make important legal decisions about their brands. In order to maintain the accuracy and integrity of the register, for the benefit of all its users, the USPTO must have the appropriate tools to enforce compliance by all applicants and registrants,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Andrei Iancu. “This rule is a significant step in combatting fraudulent submissions.”

Trademark rule requires foreign applicants and registrants to have a U.S.-licensed attorney

Does this rule affect me?
•Foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings, including Canadian trademark filers, must be represented at the United States Patent and Trademark Office (USPTO) by an attorney who is licensed to practice law in the United States. See more about foreign-domiciled trademark applicants, registrants, and parties.
•U.S.-licensed attorneys representing trademark filers must provide all of the following: ◦Their name, postal address, and email address
◦A statement attesting to their active membership in good standing of a bar of the highest court of a U.S. state, commonwealth, or territory
◦Information concerning their bar membership (state, number if applicable, and year of admission).

      See more about U.S.-licensed attorneys.
•Canadian patent agents are no longer authorized to represent Canadian trademark applicants, registrants, or parties before the USPTO in trademark matters. See more about Canadian patent agents.
•Canadian trademark attorneys and agents continue, if eligible, to be recognized as additionally appointed practitioners who can represent their Canadian clients, although the USPTO will correspond only with the appointed U.S.-licensed attorney. See more about Canadian trademark attorneys and agents.

See the final rule.

When is this rule effective?

This rule went into effect on August 3, 2019.

What are the goals of this rule?

The rule is intended to:
•Increase USPTO customer compliance with U.S. trademark law and USPTO regulations.
•Improve the accuracy of trademark submissions to the USPTO.
•Safeguard the integrity of the U.S. trademark register.

Why is this rule in place?

Businesses rely on the U.S. trademark register to make important legal decisions about their brands. In order to maintain the accuracy and integrity of the register, for the benefit of all its users, the USPTO must have the appropriate tools to enforce compliance by all applicants and registrants. We discovered an increasing number of foreign trademark applicants, registrants, and parties are filing inaccurate and possibly fraudulent submissions with the USPTO that do not comply with U.S. trademark law or the USPTO’s rules. Often, these submissions are made with the assistance of foreign individuals or entities not authorized to represent applicants at the USPTO.

Many countries already require local attorneys to represent applicants. A significant number of trademark offices around the world require foreign-domiciled applicants and registrants to obtain local counsel as a condition for filing papers with those trademark offices.