By: Adam Baechler
Effective August 3, 2019, the United States Patent and Trademark Office (USPTO) enacted a new rule requiring all foreign trademark applicants and registrants be represented by a U.S. licensed attorney.[1] Foreign trademark applicants and registrants include any party whose legal residence, or principal place of business, is outside of the United States. Another facet of this new rule requires U.S. attorneys practicing before the USPTO to confirm they are in good standing with the bar, and provide their bar membership confirmation number. [1]
According to a spokesperson from the USPTO, “Many other countries worldwide have had this requirement for decades,” and this new rule will help “improve the quality of submissions to the USPTO.”[1] The overarching goal of this rule is to combat the influx of fraudulent submissions by having licensed U.S. attorneys, who understand the U.S. Trademark prosecution process, represent foreign applicants and registrants under U.S. Trademark law.[2]
A mark must be used in commerce in order to be eligible for registration with the USPTO. Use in commerce has two distinct meanings, one for goods and one for services. A mark used in commerce for goods must appear on either the goods themselves or the packaging of the goods, and the goods must be sold and transported across state lines. A mark used in commerce for services must be used in conjunction with the advertisement or marketing of the services, and the rendering of services must be across state lines.
A fraudulent filing occurs when an applicant knowingly makes a false, material misrepresentation with the intent to deceive the USPTO.[3] In the application to the USPTO, images of the goods in the way they will appear to consumers for sale must be provided. A false material misrepresentation means that the applicant has knowingly not provided the good in the way it will appear to consumers, or has doctored the good in some way to make it appear saleable when it is not. The penalty, contained in the oath signed when filing an application, can be cancellation of the mark. In more extreme cases, a fine or imprisonment can be imposed. There has been a recent concern that foreign applicants have been filing a larger number of potentially fraudulent applications, which slows the prosecution process, and makes it more challenging for actual applicants to obtain trademark protection.
This rule extends to Canadian patent agents, who will now no longer be able to represent Canadian trademark clients before the USPTO. Canadian trademark attorneys and agents, if eligible, will be recognized as additional practitioners who can represent their Canadian clients, however all correspondence with the USPTO must be through a U.S. licensed attorney.[2] Although Canadian counsel is still permitted to represent their clients, they will need to find a U.S. based attorney for all correspondence with the USPTO. Skilled U.S. attorneys will be able to more effectively prosecute trademarks for Canadian clients because of their experience with U.S. law.
Although similar rules have already been in practice for decades in other countries, this rule will affect trademark applicants in two ways. First, U.S. applicants will now have greater confidence to contest fraudulent filings because it is unlikely nefarious foreign applicants will expend resources defending a knowingly fraudulent mark. Therefore, once foreign applicants default on their marks, U.S. applicants will be able to have said marks cancelled faster, improving efficiency at the USPTO. Second, foreign applicants filing bona fide applications will encounter less opposition from the USPTO because they will now have to use a U.S. based attorney to file their applications. U.S. attorneys understand U.S. trademark law better than foreign based attorneys, thus allowing foreign applicants’ speedier response times, and less mistakes due to incorrect filings. Requiring U.S. attorneys to represent foreign clients will ensure there is uniformity in trademark applications, and will help streamline the process at the USPTO.[2]
This new administrative rule is likely to be beneficial because although it will necessitate foreign applicants to seek U.S. counsel, it will increase the validity of issued trademarks and streamline the prosecution process.[4] When fraudulent trademarks are filed, they have a high probability of being contested by owners of similar valid marks, creating downstream issues, such as intensive litigation. Litigation exhausts the resources of both the involved parties and the USPTO Trademark Trial and Appeals Board (TTAB). Ensuring that more trademarks issued are valid will allow the USPTO to allocate their resources more effectively to help applicants with the registration process. Additionally, U.S. attorneys familiar with U.S. Trademark law are likely to submit correct documentation during prosecution, thereby eliminating the need for correcting documents filed by foreign trademark attorneys and reducing the trademark application backlog.[5]
Sources:
[3] In re Bose Corp., 91 USPQ2d 1938 (Fed. Cir. 2009)
[5] https://www.inventorsdigest.com/articles/is-there-a-backlog-on-trademarks/
