New Proposal Would Require U.S. Attorney Representation for Foreign Entities Registering Trademarks
18 February 2019
The U.S. Patent and Trademark Office is seeking public input by 18 March on a proposal to amend the rules of practice in trademark cases to require that any trademark applicant, registrant or party to a proceeding be represented by a qualified U.S. attorney. The USPTO states that this is necessary to ensure that U.S. registrations issued to foreign applicants are not subject to invalidation for reasons such as improper signatures and use claims as well as to enable the agency to more effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters.
The USPTO notes that the proposed requirement is similar to requirements in place in many other economies, including mainland China, Brazil, Chile, Israel, Japan, Jordan, Morocco, South Korea and South Africa, as well as the European Union’s Intellectual Property Office. There would be exceptions allowing for submissions from Canadian attorneys as well as “Madrid applications” that were initially filed with the International Bureau of the World Intellectual Property Organisation and subsequently transmitted to the USPTO with all formalities and statutory requirements already satisfied (and therefore in a condition ready for publication). In regard to the Madrid exception, the USPTO states that it may consider waiving the requirement to appoint a qualified U.S. practitioner prior to publication in this limited situation until such time as the Madrid system is updated to allow for the designation of a U.S. attorney.
USPTO statistics indicate that the percentage of foreign trademark filings rose from 19 percent in fiscal year 2015 to 26 percent in fiscal year 2017. The agency claims that requiring representation by a U.S. attorney will not only aid the USPTO in using the resources of its trademark examiners more effectively but also ensure that filings are done by practitioners who are subject to the disciplinary jurisdiction of its Office of Enrollment and Discipline.
According to the agency, non-compliance with USPTO OED recommendations can be forwarded to U.S. state bar associations with disbarment authority and used for U.S. criminal prosecution. This would ostensibly result in a more accurate and reliable trademark register, and fewer applicants, registrants and parties would incur the costs associated with investigating the actual use of a mark to assess any conflict, initiating proceedings to cancel a registration or oppose an application, engaging in civil litigation to resolve a dispute over a mark, or changing business plans to avoid use of a chosen mark.
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