21 August 2019

New USPTO Rule For Foreign Trademark Applicants

Dennemeyer S.A.


The Dennemeyer Group offers high-quality services for the protection and management of Intellectual Property rights and is committed to being the first-choice partner for customers globally. With 60 years of experience in the industry and 20+ offices worldwide, Dennemeyer manages over three million IP rights of around 8,000 customers. Organizations with even the largest, most diverse IP portfolios turn to the Dennemeyer Group for reliable protection, administration and management of their most valuable assets. In addition to a full spectrum of IP-related legal services, Dennemeyer offers IP strategy consulting, comprehensive IP management software, IP maintenance services and cutting-edge patent search and analytics tools.
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...
United States Intellectual Property
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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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