I’m U.S.-licensed attorney Morris Turek and I assist individuals and businesses located outside of the United States with their important U.S. trademark matters. Since 2005, I’ve helped clients located on six continents (no Antarctica penguins have hired me yet) file their trademark applications, renew their trademark registrations, and defend their trademark rights. As a U.S.-licensed attorney, I’m legally able to work with foreign individuals, businesses, and organizations no matter where in the world they happen to be. I’ve implemented affordable and predictable flat fee trademark pricing for the vast majority of my services, and I offer numerous payment methods so that they can choose the one that’s most cost-effective for them. In addition, I can easily communicate with non-U.S. residents through Skype, my Facebook business page, email, and the old-fashioned telephone. I just want to make it easy for people residing outside of the U.S. to contact me and to work with me on all of their various trademark-related matters.
Do You Need a U.S.-Licensed Attorney for Your Trademark Matter?
In the past, the United States Patent and Trademark Office (USPTO) didn’t require anyone (including individuals and entities residing in the U.S.) to use a U.S.-licensed attorney for any purpose whatsoever. In other words, you could file your own trademark application or renew your own trademark registration without hiring an attorney. Furthermore, you could choose to represent yourself in a trademark opposition or trademark cancellation proceeding before the Trademark Trial and Appeal Board (TTAB).
This has now changed. Effective August 3, 2019, if you’re a “foreign-domiciled” trademark applicant, registrant, or party to a TTAB proceeding, you are required to work with a U.S.-licensed attorney to file any trademark-related documents with the USPTO.
Who is Considered “Foreign-Domiciled” for Purposes of Needing a U.S.-Licensed Attorney?
You will need to hire a U.S.-licensed attorney if you meet either of these criteria:
- You are an individual with a permanent legal residence outside the United States or its territories, or
- You are an entity (such as a corporation or limited liability company) with its principal place of business (headquarters) outside the United States or its territories
How Does This Rule Affect Foreign-Domiciled Individuals and Entities?
Essentially, this rule requires all foreign-domiciled individuals and entities to hire a U.S.-licensed attorney for the purpose of submitting any forms or documents to the USPTO. This includes filing a trademark application, a response to a trademark office action, the Statement of Use, an Extension of Time to file the Statement of Use, or any trademark registration renewal or maintenance documents. There are currently no exceptions to this rule.
In addition, foreign-domiciled individuals and entities must be represented by a U.S.-licensed attorney in all TTAB proceedings (i.e. trademark oppositions, trademark cancellations, and trademark appeals). Again, there are no exceptions to this rule.
Contact an Experienced U.S.-Licensed Attorney for Professional Trademark Services
Again, I’m experienced US trademark attorney Morris Turek. If you’re foreign-domiciled and are seeking the assistance of a dedicated and skilled U.S.-licensed attorney, I invite you to contact me at your earliest convenience. You can send an email to firstname.lastname@example.org, call me at (314) 749-4059, or fill out the contact form at the bottom of this page. Because of the significant time difference between the United States and many other countries, I would be happy to schedule a phone call or Skype meeting at a time that’s convenient for you. Just let me know if that’s what you would like to do and we can promptly arrange your free consultation. I look forward to hearing from you soon.