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 allowed to file trade marks directly with the USPTO without engaging an authorized US attorney.
The NPR Summary reads: The United States Patent and Trademark Office (USPTO or Office) proposes to amend the Rules of Practice in Trademark Cases and also the rules regarding Representation of Others Ahead of the Inventhelp Success to require applicants, registrants, or parties to some proceeding whose domicile or principal place of work is not located within america (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to become represented by legal counsel who is an active member in good standing in the bar of the highest court of the state inside the U.S. (like the District of Columbia and 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 in the public that U.S. registrations that issue to foreign applicants are certainly not subject to invalidation for reasons like improper signatures and utilize 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 several licensed US attorneys that will carry on and help with expanding protection in our client’s trade marks into the usa. No changes to these arrangements will likely be necessary so we remain available to facilitate US trade mark applications for our local clients.
United States Of America designations filed through the Madrid protocol will fall inside the proposed new requirements. However, it is actually anticipated the USPTO will review procedures for designations which proceed right through to acceptance at the first instance so that a US Attorney do not need to be appointed in cases like this. Office Actions will need 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 behalf of our local clients is not going to change.
A huge change is set to come into force for Australian trade mark owners, who, from 25 February 2019, will no longer be capable of 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 for the Trade Marks Act will bring consistency throughout the Inventhelp Store Products, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which so far, was the only act to enable this defence. We expect that the removing of this portion of the Trade Marks Act will permit the “unjustified threats” provisions from the Trade Marks Act to be interpreted just like the Patents Act. Thus, we feel it is likely that in the event that infringement proceedings are brought against an event who fwhdpo ultimately found never to be infringing or the trade mark can be found to get invalid, the trade mark owner is going to be deemed to get made unjustified or groundless threats.
Furthermore, a brand new provision will likely be put into the Invention Help Companies, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the energy to award additional damages when a person is deemed to get made unjustified threats of proceedings for infringement. A legal court will consider several factors, such as the conduct from the trade mark owner after making the threat, any benefit derived through the trade mark owner from the threat and the flagrancy from the threat, in deciding whether additional damages are to be awarded up against the trade mark owner.