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 would otherwise be permitted 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 as well as the rules regarding Representation of Others Before the How To Pitch An Invention Idea To A Company to require applicants, registrants, or parties to some proceeding whose domicile or principal workplace is not located within the United States (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to be represented by an attorney that is a dynamic member in good standing in the bar from the highest court of any state inside the U.S. (such as the District of Columbia and then any Commonwealth or territory from 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 subjected to invalidation for reasons like improper signatures and make use of claims and enable 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 still help with expanding protection of our client’s trade marks into the usa. No changes to such 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 inside the proposed new requirements. However, it is actually anticipated that the USPTO will review procedures for designations which proceed right through to acceptance at the first instance so that a US Attorney need not be appointed in cases like this. 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 for our local clients will never change.
A huge change is set to come into force for Australian trade mark owners, who, from 25 February 2019, will not 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 from a 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 across the I Have An Idea For An Invention, Designs Act, Plant Breeder’s Rights Act as well as the Trade Mark Act, which so far, was the only real act to enable this defence. We expect that the removal of this section of the Trade Marks Act will permit the “unjustified threats” provisions from the Trade Marks Act to become interpreted similar to the Patents Act. Thus, we feel chances are that in the event that infringement proceedings are brought against an event who fwhdpo ultimately found to not be infringing or the trade mark is located to be invalid, the trade mark owner will be deemed to have made unjustified or groundless threats.
Additionally, a new provision will likely be put into the Can I Patent An Idea, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording a legal court the power to award additional damages when one is deemed to have made unjustified threats of proceedings for infringement. The court will consider a number of factors, like the conduct in the trade mark owner after making the threat, any benefit derived through the trade mark owner from your threat and the flagrancy in the threat, in deciding whether additional damages should be awarded up against the trade mark owner.