Foreign trademark applicants will soon require U.S. attorneys

The United States Patent and Trademark Office has proposed a requirement that foreign-domiciled trademark applicants be represented by licensed U.S. attorneys when filing with the USPTO. The public comment period closed in February 2019, with final approval anticipated in June and implementation by July 2019.

Why the change

The USPTO cited several objectives. The rule aims to more effectively enforce foreign applicant compliance with U.S. law, provide greater confidence in registrations, and improve the accuracy of the trademark register.

Fraudulent applications

A significant driver was an influx of applications from applicants in China subsidized by their government, which reportedly offered roughly $790 to any citizen who successfully obtained a federal U.S. trademark registration. That incentive encouraged volume filings regardless of any genuine business intent.

The proposed requirement mirrors existing practice in Canada, Japan, and China. The intent is not that attorneys detect fraud better than examiners; it is to raise the cost of insincere applications. When legal representation becomes mandatory, the subsidy stops being attractive to applicants without a real trademark interest.

Application quality

Research supports the approach. A 2013 Stanford study found that pro se applications faced significantly higher rejection rates than attorney-represented filings, with overly broad descriptions of goods and services among the most common errors, the kind that later expose a registration to challenge.

Update, January 25, 2019.