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.
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