The USPTO is seeking to change its federal trademark laws for trademark applicants, registrants, and parties who have are domiciled outside the United States.  The proposed change would require applicants, registrants, and parties to hire a U.S.-licensed attorney for representation at the USPTO.  Additionally, U.S.-licensed attorneys representing anyone before the USPTO in trademark matters would be required to provide their bar membership information and confirm their status as an active member in good standing.  U.S. attorneys meeting these qualifications could still represent foreign and domestic trademark applicants and registrants at the USPTO.

The proposed change is a response to the “increasing problem of foreign trademark applicants who purportedly are pro se and who are filing inaccurate and possibly fraudulent submissions that violate the Trademark Act (Act) and/or the USPTO’s rules.”  Foreign applications sometimes file applications claiming a mark’s use in commerce, but rely on mocked-up or digitally altered specimens that show the mark may not be in use.  Several of these applicants rely on advice or assistance from foreign individuals and entities who are not authorized to represent trademark applicants before the USPTO.

The USPTO also learned that U.S. attorneys have received emails from persons located in China and possibly other locations, offering to pay the attorneys to use their information in trademark filings.  The USPTO believes the solicitations are an effort to circumvent the U.S.-attorney requirement.

Public comments were accepted until March 18, 2019.  Whether the proposed change will be implemented is to be determined.

View the full text of the proposed change here.