Update: USPTO Issues Revised Counsel Rules

On September 5, 2019, the U.S. Patent and Trademark Office issued a revised Examination Guidelines 4-19, “Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants and Registrants.” The Exam Guidelines 4-19, originally effective on August 3, 2019, were new formal requirements for trademark applications originating by applicants domiciled outside the United States. The rules originally required Trademark Examiners to inquire upon the domicile of a foreign applicant with a questionnable U.S.-based address or non-physical address; this raised the concern that the Trademark Examiners were acting in a quasi-immigration enforcement role which is outside the purview of the USPTO. We discussed the specifics of this concern in a previous blog posting.

Amid intense backlash from the public, the USPTO issued a revised Guidelines. Now, there is no mention of any immigration review of foreign applicants in the U.S., and the domicile requirement is limited to establishing proof of a U.S.-based physical address, and nothing more.

Going forward, as of August 3, 2019, all foreign trademark applicants must appoint a U.S.-admitted attorney for prosecution of their trademark applications before the USPTO.