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 will otherwise be allowed 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 guidelines of Practice in Trademark Cases and the rules regarding Representation of Others Before the How To Patent An Invention to require applicants, registrants, or parties to some proceeding whose domicile or principal workplace is not really located within the United States (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to become represented by a lawyer who may be an energetic member in good standing in the bar of the highest court of any state in the U.S. (such as the District of Columbia and 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 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 encourage 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 numerous licensed US attorneys that will continue to aid in expanding protection of our own client’s trade marks into america. No changes to such arrangements is going to be necessary and that we remain accessible to facilitate US trade mark applications on the part of our local clients.
United States designations filed through the Madrid protocol will fall in the proposed new requirements. However, it is anticipated the USPTO will review procedures for designations which proceed right through to acceptance at 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 transformation will affect self-filers into the usa – our current practice of engaging a US Attorney to answer Office Actions for our local clients will never change.
A big change is defined 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 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 can soon no longer be possible.
This amendment to the Trade Marks Act will bring consistency throughout the I Have An Invention Idea Now What, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which so far, was the only act to permit this defence. We expect that removing this area of the Trade Marks Act allows the “unjustified threats” provisions of the Trade Marks Act to become interpreted just like the Patents Act. Thus, we feel chances are that in case infringement proceedings are brought against a party who fwhdpo ultimately found never to be infringing or the trade mark can be found to get invalid, the trade mark owner will be deemed to have made unjustified or groundless threats.
Additionally, a whole new provision is going to be added to the Inventhelp Invention Service, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording a legal court the power to award additional damages in case one 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 from the trade mark owner from the threat and also the flagrancy of the threat, in deciding whether additional damages should be awarded from the trade mark owner.