The USPTO recently proposed changes which would 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 will otherwise be permitted to submit trade marks directly with the USPTO without engaging an authorized US attorney.
The NPR Summary reads: America Patent and Trademark Office (USPTO or Office) proposes to amend the principles of Practice in Trademark Cases as well as the rules regarding Representation of Others Prior to the Inventors Helpline to require applicants, registrants, or parties to some proceeding whose domicile or principal place of business is not really located within the United States (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to be represented by an attorney who is a dynamic member in good standing of the bar from the highest court of any state inside the U.S. (including the District of Columbia and then any Commonwealth or territory of 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 subject to invalidation for reasons including improper signatures and use claims and allow 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 a number of licensed US attorneys who can carry on and assist with expanding protection in our client’s trade marks into america. No changes to those arrangements is going to be necessary and we remain accessible to facilitate US trade mark applications on behalf of our local clients.
United States designations filed through the Madrid protocol will fall inside the proposed new requirements. However, it is anticipated that the USPTO will review procedures for designations which proceed to acceptance on the first instance so that a US Attorney do not need to be appointed in cases like this. Office Actions must be responded to by qualified US Attorneys. This transformation will affect self-filers into the United States – our current practice of engaging a US Attorney to respond to Office Actions for our local clients is not going to change.
A huge change is set ahead into force for Australian trade mark owners, who, from 25 February 2019, will not be in a position to rely on the commencement of infringement proceedings as a defence to groundless threats. Currently, a trade mark owner who commenced infringement proceedings against another party was exempt from the cross-claim of groundless or unjustified threats. However, this can soon not be possible.
This amendment to the Trade Marks Act will take consistency across the Cool Invention Ideas, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which so far, was the only act to allow this defence. We expect that removing this portion of the Trade Marks Act allows the “unjustified threats” provisions from the Trade Marks Act to become interpreted like the Patents Act. Thus, we know chances are that in the event infringement proceedings are brought against a celebration who fwhdpo ultimately found to not be infringing or even the trade mark is found to become invalid, the trade mark owner will likely be deemed to possess made unjustified or groundless threats.
Additionally, a brand new provision will be included in the Inventhelp Success Stories, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording a legal court the energy to award additional damages in case one is deemed to possess made unjustified threats of proceedings for infringement. The legal court will consider numerous factors, including the conduct of the trade mark owner after making the threat, any benefit derived by the trade mark owner from the threat as well as the flagrancy in the threat, in deciding whether additional damages have to be awarded against the trade mark owner.