The USPTO recently proposed changes which will force foreign trade mark applicants to engage a US-based attorney, in a bid to limit inaccurate and fraudulent applications by self-filers. The proposed changes, published by way of a Notice of Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who would otherwise be allowed to submit trade marks directly with the USPTO without engaging a licensed US attorney.
The NPR Summary reads: America Patent and Trademark Office (USPTO or Office) proposes to amend the principles of Practice in Trademark Cases and the rules regarding Representation of Others Ahead of the Reviews For Inventhelp to require applicants, registrants, or parties to your proceeding whose domicile or principal place of work will not be located within the usa (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to become represented by legal counsel who is an energetic member in good standing in the bar from the highest court of a state within the U.S. (like the District of Columbia and then any Commonwealth or territory in the U.S.). A requirement that such foreign applicants, registrants, or parties be represented by a qualified U.S. attorney will instill greater confidence within the public that U.S. registrations that issue to foreign applicants are not subjected to invalidation for reasons including improper signatures and make use of claims and encourage the USPTO to more effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters.
At Michael Buck IP, we already work closely with numerous licensed US attorneys that will carry on and assist with expanding protection of our own client’s trade marks into america. No changes to these arrangements will be necessary so we remain available to facilitate US trade mark applications for our local clients.
U . S . designations filed through the Madrid protocol will fall inside the proposed new requirements. However, it really is anticipated the USPTO will review procedures for designations which proceed through to acceptance on the first instance in order that a US Attorney do not need to be appointed in cases like this. Office Actions will have to be responded to by qualified US Attorneys. This change will affect self-filers into the United States – our current practice of engaging a US Attorney to respond to Office Actions on the part of our local clients will never change.
A large change is set ahead into force for Australian trade mark owners, who, from 25 February 2019, will no longer be able to rely on the commencement of infringement proceedings as being a defence to groundless threats. Currently, a trade mark owner who commenced infringement proceedings against another party was exempt coming from a cross-claim of groundless or unjustified threats. However, this will soon no longer be possible.
This amendment towards the Trade Marks Act brings consistency across the Patent An Invention, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which up to now, was the sole act to permit this defence. We expect that removing this portion of the Trade Marks Act will allow the “unjustified threats” provisions in the Trade Marks Act to get interpreted similar to the Patents Act. Thus, we know it is likely that in the event that infringement proceedings are brought against a party who fwhdpo ultimately found never to be infringing or perhaps the trade mark is found to be invalid, the trade mark owner will likely be deemed to have made unjustified or groundless threats.
Additionally, a brand new provision will be put into the Inventhelp Patent Services, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the power to award additional damages in case an individual is deemed to get made unjustified threats of proceedings for infringement. The court will consider several factors, like the conduct in the trade mark owner after making the threat, any benefit derived from the trade mark owner from your threat as well as the flagrancy in the threat, in deciding whether additional damages should be awarded up against the trade mark owner.