In International, Patents and Trademarks

The United States Patent and Trademark Office (“USPTO”) has proposed a rule change which would “require applicants, registrants, or parties to a proceeding whose domicile or principal place of business is not located within the U.S. or its territories to be represented by an attorney who is an active member in good standing of the bar of the highest court of any of the 50 states of the U.S., the District of Columbia, and any Commonwealth or territory of the U.S.” This requirement would be similar to those already in place in other countries and the European Union’s Intellectual Property Office. The proposed change would apply to applications received by the USPTO filed by a foreign applicant under Sections 1(a) (use-based applications), 1(b) (intent-to-use applications), 44(d) (claims of priority based on earlier-filed foreign application), and 44(e) (ownership of registration in applicant’s country of origin). Applicants without a qualified U.S. attorney would be notified of the requirement to appoint one through an office action issued to the applicant from the USPTO. The applicant would then have six (6) months to respond and comply or risk having the application rejected. As for Section 66(a) (Madrid) applications, the process would be slightly different since these applications are filed through the International Bureau of the World Intellectual Property Organization. Because there is currently no provision in such applications for designation of a U.S. attorney, the USPTO is considering waiving the requirement to appoint a qualified U.S. attorney until the application is published for opposition.

The purpose of the proposed rule is to “instill greater confidence in the public that U.S. registrations that issue to foreign applicants are not subject to invalidation for reasons such as improper signatures and use claims and [to] enable the USPTO to more effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters.” The proposal is in direct response to the increased number of: (a) foreign-filed fraudulent and improper applications; and (b) known instances of unauthorized practice of law (“UPL”) by foreign individuals and entities improperly representing parties in U.S. trademark matters. Unfortunately, most of the USPTO’s available remedies against fraudulent trademark filers and others engaged in UPL (which include orders to show cause, threats of criminal perjury, and exclusion orders) are largely ineffective against foreign individuals and entities with little threat or fear of punishment.

Our firm has seen firsthand an increased number of apparently fraudulent filings. We regularly encounter digitally altered images of products submitted as specimens purporting to show the applied-for mark in use on various goods. We have also encountered a number of instances of apparent UPL in TTAB proceedings, with parties being represented by unauthorized individuals or entities. As the USPTO recognizes, both have harmful negative effects. Fraudulent registrations not only undermine public confidence in the integrity of the U.S. federal register, but also increase costs and burdens on legitimate users of a mark. These legitimate users must invest time and money to investigate the validity of fraudulent registrations and their owners and initiate formal action in the TTAB or federal courts to overcome and remove them. The hope is that by requiring applicants to obtain U.S.-based counsel, such abuses will be significantly curtailed since U.S. attorneys should better understand the requirements of U.S. trademark law and are more easily subject to disciplinary measures when appropriate.

The USPTO is accepting public comments on the proposed rule changes until March 18, 2019.

For more information please contact us and visit this link to the USPTO’s website.

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