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On August 3, a new rule became effective at the U.S. Patent
and Trademark Office (USPTO) requiring foreign-domiciled trademark
applicants and registrants to be represented by an attorney who is
licensed to practice law in the United States in trademark
proceedings. The rule will prevent instances of unauthorized
practice of law, which has resulted in inaccurate communications
with foreign trademark applicants, potentially rendering many
applications invalid.
As the final rule published in the
Federal Register in early July notes, current mechanisms to
enforce against unauthorized practice of law in trademark matters,
including sanctions, have not been effective in cases involving
foreign applicants. When a U.S.-licensed attorney engages in
improper representation at the USPTO, that attorney can be excluded
from further representation at the agency and face action from
state bar associations and other federal agencies. Such actions do
not pose a realistic threat against foreign actors though, and U.S.
law enforcement may lack jurisdiction over such parties even when
criminal charges for misconduct may be involved.
The difficult nature of properly disciplining foreign actors for
misconduct is becoming more problematic because of a steady rise in
trademark filings into the U.S. from foreign entities. The final
rule in the Federal Register includes statistics showing that the
percentage of all trademark filings coming from foreign applicants
has risen from 19 percent in fiscal year 2015 to 26 percent in
fiscal year 2017. At the same time, a growing number of foreign
trademark applicants have opted for pro se representation
instead of obtaining the services of licensed attorneys. In fiscal
year 2015, 25.4 percent of foreign applicants filed pro
se, while in fiscal year 2017 pro se representation
grew to 44 percent.
In recent months, the USPTO has been vocal about the impact of
bad faith registrations. In mid-June, Commissioner for Trademarks,
Mary Boney Denison, delivered a statement that
touched on the subject before the U.S. House of Representatives
Subcommittee on Courts, Intellectual Property and the Internet.
Commissioner Denison discussed the agency's concerns over a
"growing and significant number" of bad faith submissions
containing false use claims or digitally altered specimens of use,
which were coming from overseas applicants, especially from
mainland China where 80 percent of U.S. trademark applicants file
pro se.
Under the new rule, foreign-domiciled applicants are now
required to use an attorney licensed in the U.S. to file all
submissions, including those made through the Trademark Electronic
Application System (TEAS). Foreign applicants also need
U.S.-licensed representation for submissions made to the Trademark
Trial and Appeal Board (TTAB) through the Electronic System for
Trademark Trial and Appeals (ESTTA). If a foreign applicant filed a
trademark application or submission prior to the new rule becoming
effective and the submission is acceptable, the submission will be
accepted. However, if responding to a USPTO office action filed
prior to the new rule, foreign applicants must now obtain U.S.
representation to file an acceptable response. At the TTAB, all
proceedings involving foreign applicants will be suspended until
U.S. representation is obtained.
For Canadian applicants having Canadian representation, the
effect of the rules is slightly different. Canadian patent agents
can no longer represent Canadian applicants in trademark
matters at the USPTO. Canadian trademark attorneys and agents,
if reciprocally recognized by the Office of Enrollment and
Discipline (OED), may continue to serve as an additionally
appointed practitioner for Canadian clients, however attorneys
licensed in the U.S. must file formal submissions for those
Canadian applicants.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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