7 Ways a U.S. Attorney Can Help You File a Successful Trademark Application as an International Company

By: Salma Benkabbou, Esq.

The Millennial Business Lawyer®

U.S. attorney needed!

A new rule from the United States Patent and Trademark Office (USPTO) requires all international companies that wish to file a trademark application do so with the help of a U.S. attorney who is licensed to practice law in the United States. This includes any company wishing to file an application from Canada, as well. The new rule went into effect on August 3, 2019. The experienced intellectual property attorneys from the Benkabbou Law Firm, PLLC can represent your company when you file an application for a trademark with the USPTO.

U.S. attorney

The Rules for Canadian Companies

Canadian companies are no longer allowed to be represented by a Canadian attorney when filing for a trademark with the USPTO. This rule is in place for new trademark issues that are brought before the USPTO. Any existing trademark attorneys from Canada are permitted to represent their clients, if they are eligible, but the USPTO will still only communicate with the appointed U.S. attorney.

The Goals of the New Rule

The goals of the new rule from the USPTO include the following:

  • Safeguard the register for United States trademarks
  • Improve accuracy of all trademark applications made with the USPTO
  • Increase the compliance of customers of the USPTO with the trademark regulations and laws in place in the United States

Reasons for the New Rule

Aside from the goals mentioned above, the USPTO was forced to initiate the new rule for a few reasons. One of those reasons was that many trademark agents were operating under the guise that they were practicing law, representing trademark applicants of foreign companies without having the authorization to practice law. This means that these agents are not permitted to represent parties, registrants or applicants in front of the USPTO. The bottom line here is that the USPTO wants foreign applicants to be represented by a licensed U.S. attorney who knows the law and the requirements for filing a trademark application.

How an U.S. Attorney can Help

Now that your foreign company is required to have legal counsel from a U.S. Attorney, you should know the benefits of working with one. The benefits include the following:

  • Search before filing the application to avoid wasting marketing dollars and time and infringement lawsuits
  • Complete review of your application to ensure it meets United States laws and regulations
  • Correct any mistakes on your forms that could lead to the denial of your application
  • Legal strategy for filing your application
  • Answer all of your questions related to the application process
  • File your application with the USPTO
  • Represent you as a licensed U.S. Attorney in front of the USPTO and handle any opposition proceedings

Filing a Trademark from Outside the United States? Call the Benkabbou Law Firm, PLLC

When you wish to file a trademark with the USPTO and are operating as a foreign company, the team from the Benkabbou Law Firm, PLLC will be able to examine your situation, help complete the application, and represent you in front of the USPTO when you submit your trademark application. Call our office at 813-586-3351 or email us at consult@blawfirmpllc.com to schedule a consultation with one of our U.S. attorneys. We look forward to being of service!