USPTO representation tightened: foreign-domiciled filers need U.S. counsel

The Office did not leave this as a suggestion. Under 37 CFR 2.11, a trademark applicant, registrant, or party to a Trademark Trial and Appeal Board proceeding whose domicile is not in the United States or its territories must be represented by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or a U.S. commonwealth or territory.

Who has to appoint U.S. counsel

Foreign-domiciled filers, including Canadian applicants, registrants, and TTAB parties, need a U.S.-licensed attorney for trademark submissions to the USPTO. An individual's domicile is the place that person lives and intends as a principal home. A company's domicile is its principal place of business, the headquarters where senior officers actually direct the business.

A P.O. Box, a mail drop, or a "care of" address is usually not a domicile. The USPTO asks for a real street address so it can tell whether the U.S.-counsel rule applies.

What the attorney actually has to do

Only a U.S. attorney authorized to practice can file a trademark application on behalf of someone else. That is true for U.S. applicants too. For foreign-domiciled clients, the same attorney also has to handle later filings: office-action responses, declarations, renewals, and TTAB papers.

Madrid Protocol (Section 66(a)) filings start at WIPO, so U.S. counsel is not appointed on the international form. Once the USPTO issues a provisional refusal or other office action, U.S. counsel has to be appointed before you can respond.

Why the Office tightened this

The USPTO's published reason is register integrity. The Office said too many foreign-domiciled filings were inaccurate or worse, often prepared by people who are not allowed to practice before the USPTO. Requiring U.S. counsel is how the Office tries to put a licensed lawyer on the signature line, with bar information on file.

The attorney has to make a reasonable inquiry, sign the papers personally, and keep bar membership current. Lending your bar number to a foreign filing mill is not a side hustle. It is a discipline problem.

What to do if this is you

If you are outside the United States and you want a U.S. trademark, start with counsel who can actually appear. We prepare and file U.S. applications, respond to office actions, and appear in TTAB matters for foreign-domiciled clients. The attorney fee for preparing a U.S. application starts at $200. USPTO fees are separate and paid to the Office.