As of August 3, 2019, non-US applicants, registrants, and parties are required to be represented by a US trademark attorney for trademark application with the USPTO.
Why has this rule been put in place? Simply put: the USPTO wants to make sure that all registrants and applicants comply with trademark law. There have been increasing instances of inaccurate or fraudulent filings from foreign-domiciled trademark registrants, and this new law has been put in place to ensure the accuracy and integrity of registers.
The goals of this law are to:
- Maintain the US trademark register’s integrity
- Ensure USPTO customers are following US trademark law regulations ● Improve trademark accuracy
The Benefits Of Hiring A US Trademark Attorney
If you are not a US citizen, you’re unlikely to be familiar with the technical requirements involved in registering with the USPTO. Maybe you aren’t even familiar with how to register in your own country, much less another.
Most people don’t know the ins-and-outs of trademark registration, which is why they typically seek legal advice and services from an attorney.
US trademark attorneys can help you along every step of the process until your mark is finally registered.
Furthermore, you can conduct an in-depth search for a US trademark attorney you trust.
What To Do Before Hiring A US Trademark Attorney
Conduct a trademark search – you need to be sure the mark you have in mind is unique enough to be accepted.
In trademark law there is something called The Spectrum Of Distinctiveness. This is a spectrum where on one end, a mark is impossible to be registered; on the other end, the chances are very likely.
- Generic Marks: These have basically zero chance of getting trademarked. Generic marks are the common name for the product/service – for example, a shoe company trying to trademark the word “shoe”.
- Descriptive Marks: These have some chance of registration, but it’s slim. Descriptive marks are basic descriptors of the product/service – for example, Sharp TVs or American Airlines.
- Suggestive Marks: This is the middle-ground. Your mark could be trademarked if it is Suggestive, that is to say, it’s a name or phrase that suggests or hints at the product/service – for example, Airbus or Netflix.
- Arbitrary Marks: These marks have a high chance of being trademarked. Arbitrary marks are names with no relation to the product/service whatsoever – for example, Camel Cigarettes or Apple Computers.
- Fanciful Marks: Getting a Fanciful mark registered is almost guaranteed. A Fanciful mark is a purely made-up name (or even symbol) that represents the product/service – for example, Xerox, Rolex, and Google.
Make sure your mark is unique enough to have a good chance of being registered. Attorneys can help you conduct trademark searches and help ensure that your mark will not only be registered, but also receive the highest level of protection reserved for Arbitrary and Fanciful marks.
Once you’ve decided on your mark, contact a US trademark attorney and they will get you started on the process of getting it officially registered with the USPTO.
