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 means of a Notice of Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who will otherwise be allowed 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 guidelines of Practice in Trademark Cases as well as the rules regarding Representation of Others Prior to the How To Obtain A Patent to require applicants, registrants, or parties to your proceeding whose domicile or principal place of business will not be located within america (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to be represented by legal counsel who may be an energetic member in good standing from the bar of the highest court of any state within the U.S. (such as the District of Columbia as well as any Commonwealth or territory from the U.S.). A requirement that such foreign applicants, registrants, or parties be represented by way of 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 like improper signatures and make use of claims and allow 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 a number of licensed US attorneys that will carry on and aid in expanding protection of our client’s trade marks into america. No changes to those arrangements will likely be necessary and we remain accessible to facilitate US trade mark applications on behalf of our local clients.
United States Of America designations filed through the Madrid protocol will fall within the proposed new requirements. However, it is actually anticipated the USPTO will review procedures for designations which proceed to acceptance on the first instance to ensure that a US Attorney do not need to be appointed in this situation. 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 on the part of our local clients will never change.
A large change is defined in the future into force for Australian trade mark owners, who, from 25 February 2019, will not be able to rely on the commencement of infringement proceedings 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 may soon not be possible.
This amendment towards the Trade Marks Act will bring consistency across the Patent Helper, Designs Act, Plant Breeder’s Rights Act and also the Trade Mark Act, which up to now, was the only real act to permit this defence. We expect that removing this area of the Trade Marks Act will allow the “unjustified threats” provisions of the Trade Marks Act to get interpreted similar to the Patents Act. Thus, we feel it is likely that in case infringement proceedings are brought against an event who fwhdpo ultimately found not to be infringing or even the trade mark can be found to become invalid, the trade mark owner is going to be deemed to possess made unjustified or groundless threats.
Additionally, a new provision will likely be put into the New Product Ideas, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the energy to award additional damages in case a person is deemed to have made unjustified threats of proceedings for infringement. A legal court will consider several factors, including the conduct from the trade mark owner after making the threat, any benefit derived by the trade mark owner from your threat and also the flagrancy in the threat, in deciding whether additional damages have to be awarded from the trade mark owner.