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New USPTO Rules For Foreign Applicants Are In Effect. Are You Covered?
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As we previously reported, the United States Patent and Trademark Office (USPTO) now requires all foreign-domiciled trademark applicants and registrants to retain licensed counsel in the United States to prosecute trademark applications, file post-registration maintenance documents, file submissions in Madrid applications, or respond to Trademark Trial and Appeal Board (TTAB) proceedings.

The U.S. attorney requirement applies to applications filed through the Madrid Protocol with an extension into the United States. We have recently seen a trend where the USPTO is issuing office actions solely on the issue of whether a U.S. attorney is associated with a Madrid extension. This leads to a delay in the prosecution of the action, as well as costs to respond to the action. We recommend proactively appointing U.S. counsel to Madrid Protocol extension applications right away, before the USPTO examines the application. On average, the USPTO examines an application three to four months after the filing date. Thus, we recommend appointing a U.S. attorney within two months of a new International Registration (IR) or World Intellectual Property Organization’s (WIPO) approval of a subsequent designation into the U.S.

To ease the burden on our foreign-domiciled clients, Lewis Roca Rothgerber Christie will waive its professional fees associated with recording itself as local U.S. counsel. This may avoid an office action altogether, and will provide the client with qualified U.S. counsel should the USPTO issue a substantive office action.

For more information, please contact Jennifer Van Kirk (JVanKirk@lrrc.com), David Jackson (DJackson@lrrc.com), or Oliver Bajracharya (OBajracharya@lrrc.com) or reach out to your personal contact at Lewis Roca Rothgerber Christie.

Tags: Patent, Trademark
  • David A. Jackson
    Partner

    David Jackson provides a full spectrum of intellectual property services and works closely with clients to help them develop comprehensive, global brand strategies. Clients value David’s creativity, strategic judgment, and ability to understand their business needs to help them best ...

  • Partner

    Jennifer Van Kirk counsels clients on a wide variety of intellectual property matters, including all aspects of ‎trademark and brand protection: trademark clearance, prosecution, licensing, portfolio ‎management, and litigation guidance. Her experience includes traditional ...

  • Oliver S. Bajracharya
    Partner

    Oliver is approachable, articulate, and goal-oriented. He helps his clients understand the big picture and then guides them to achieve their objectives.

    Oliver Bajracharya is a partner in Lewis Roca's Intellectual Property Practice Group. U.S.-based and international companies turn to ...

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