US Trade Marks to require a US-licensed Attorney

The US Patent and Trademark Office has announced that, as of 3 August 2019, all foreign-domiciled trademark owners must be represented by an attorney who is licensed to practice law in the US. Currently it is possible for foreign-domiciled owners to file submissions at the USPTO directly on their own behalf, although if they do appoint an attorney, it must be a US or Canadian-licensed attorney; attorneys from other jurisdictions such as Australia generally cannot represent clients before the USPTO.

Following the change, Canadian attorneys will no longer be able to represent clients directly, and foreign trade mark owners will have to appoint a US attorney to make submissions on their behalf; they will no longer be able to do so directly.

Fortunately, Phillips Ormonde Fitzpatrick already have an extensive network of trusted US associates whom we instruct on behalf of our clients with US trademark interests. If you have a US trademark, and need assistance with filing a US trade mark application, responding to an Office Action, or conducting an action before the US Trademark Trial and Appeal Board, please contact us.


Prior to joining the firm, Russell worked as a solicitor with a major Melbourne law firm. His practice encompasses all aspects of trade marks, including searching and advising on the registrability of marks, applying for and obtaining registration of marks in Australia and overseas, and enforcement of trade mark rights.