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 means of a Notice of Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who will otherwise be permitted to file trade marks directly with the USPTO without engaging a certified US attorney.
The NPR Summary reads: The United States Patent and Trademark Office (USPTO or Office) proposes to amend the principles of Practice in Trademark Cases and also the rules regarding Representation of Others Prior to the How To Patent Ideas to require applicants, registrants, or parties to a 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 an attorney who is an active member in good standing from the bar of the highest court of any 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 with a qualified U.S. attorney will instill greater confidence within the public that U.S. registrations that issue to foreign applicants are certainly not subject to invalidation for reasons including improper signatures and use claims and allow the USPTO to more efficiently 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 aid in expanding protection in our client’s trade marks into america. No changes to those arrangements will be necessary so we remain available to facilitate US trade mark applications on the part of our local clients.
U . S . designations filed through the Madrid protocol will fall in the proposed new requirements. However, it is actually anticipated that this USPTO will review procedures for designations which proceed through to acceptance on the first instance to ensure 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 modification will affect self-filers into america – our current practice of engaging a US Attorney to answer Office Actions on behalf of our local clients is not going to change.
A huge change is placed to come into force for Australian trade mark owners, who, from 25 February 2019, will no longer be in a position 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 not be possible.
This amendment towards the Trade Marks Act will take consistency over the How To Pitch An Invention To A Company, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which up to now, was the only act to permit this defence. We expect that the removing of this area of the Trade Marks Act will allow the “unjustified threats” provisions from the Trade Marks Act to be interpreted similar to the Patents Act. Thus, we believe chances are that in the event infringement proceedings are brought against an event who fwhdpo ultimately found to not be infringing or even the trade mark is found to get invalid, the trade mark owner will likely be deemed to possess made unjustified or groundless threats.
In addition, a new provision will likely be included in the Product Idea, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording a legal court the energy to award additional damages in the event that an individual is deemed to have made unjustified threats of proceedings for infringement. A legal court will consider a number of factors, including the conduct in the trade mark owner after making the threat, any benefit derived from the trade mark owner through the threat as well as the flagrancy from the threat, in deciding whether additional damages are to be awarded from the trade mark owner.