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 through a Notice of Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who would 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 the rules regarding Representation of Others Prior to the Inventhelp Caveman Commercial to require applicants, registrants, or parties to a proceeding whose domicile or principal workplace is not located within america (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to get represented by legal counsel that is an active member in good standing in the bar in the highest court of the state in the U.S. (like the District of Columbia and any Commonwealth or territory of 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 usually are not subjected to invalidation for reasons such as improper signatures and utilize claims and encourage the USPTO to better 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 several licensed US attorneys who can continue to assist with expanding protection in our client’s trade marks into the United States. 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.
United States Of America designations filed through the Madrid protocol will fall within the proposed new requirements. However, it really is anticipated that the USPTO will review procedures for designations which proceed through to acceptance at the first instance to ensure that a US Attorney need not be appointed in this instance. Office Actions must be responded to by qualified US Attorneys. This change will affect self-filers into america – 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 defined to come 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 from the cross-claim of groundless or unjustified threats. However, this will soon no longer be possible.
This amendment for the Trade Marks Act will take consistency throughout 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 sole act to enable this defence. We expect that removing this section of the Trade Marks Act allows the “unjustified threats” provisions from the Trade Marks Act to be interpreted like the Patents Act. Thus, we believe it is likely that in the event that infringement proceedings are brought against a party who fwhdpo ultimately found to not be infringing or the trade mark is located to become invalid, the trade mark owner will likely be deemed to possess made unjustified or groundless threats.
In addition, a new provision will be added to the Inventhelp Inventions, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording a legal court the energy to award additional damages in case a person is deemed to get made unjustified threats of proceedings for infringement. The court will consider several factors, like the conduct of the trade mark owner after making the threat, any benefit derived from the trade mark owner through the threat as well as the flagrancy in the threat, in deciding whether additional damages are to be awarded against the trade mark owner.