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Even Canadian Trademark Applicants Need US Lawyers

Canadians must
Hire US trademark lawyers:

As we previously reported, the US Patent and Trademark Office (USPTO) recently issued a Notice of Proposed Rulemaking announcing that foreign applicants will no longer be able to represent themselves before the USPTO and Trademark Trial and Appeal Board (TTAB).

As of August 2019, that new rule is now in effect.

Under the new rule, 37 C.F.R. § 11.14(c)(2), “Individuals who are not attorneys are not recognized to practice before the Office in trademark and other non-patent matters…”

Foreign lawyers can register trademarks in the US under limited circumstances:

Any foreign attorney or agent not a resident of the United States who shall file a written application for reciprocal recognition under paragraph (f) of this section and prove to the satisfaction of the OED Director that he or she is registered or in good standing before the patent or trademark office of the country in which he or she resides and practices and is possessed of good moral character and reputation, may be recognized for the limited purpose of representing parties located in such country before the Office in the presentation and prosecution of trademark matters, provided:  the patent or trademark office of such country allows substantially reciprocal privileges to those permitted to practice in trademark matters before the Office.

Only Canadian patent attorneys and agents have been reciprocally recognized so far.

However, if a Canadian attorney is representing someone before the USPTO or TTAB, a qualified US trademark attorney must also be appointed to file documents with the USPTO and correspond with the USPTO.

As we explained before, this rule change came about because of the boom in foreign trademark filings – from 19% in 2015 to 26% in 2017. 44% of those filings in 2017 were by foreign applicants who filed pro se (without a lawyer), and many filings were of low quality, with missing or erroneous information, swamping the resources of the USPTO and clogging up the system.

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