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 would otherwise be permitted to file trade marks directly with the USPTO without engaging a licensed US attorney.
The NPR Summary reads: America Patent and Trademark Office (USPTO or Office) proposes to amend the principles of Practice in Trademark Cases as well as the rules regarding Representation of Others Before the Inventhelp Invention Prototypes and Trademark Office to require applicants, registrants, or parties to your proceeding whose domicile or principal place of business will not be located within the usa (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 of the bar in the highest court of the state inside 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 by way of a qualified U.S. attorney will instill greater confidence inside the public that U.S. registrations that issue to foreign applicants are certainly not susceptible to invalidation for reasons including improper signatures and utilize claims and enable 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 that will still help with expanding protection in our client’s trade marks into the United States. No changes to those arrangements is going to be necessary and that we remain accessible to facilitate US trade mark applications for our local clients.
United States Of America designations filed by way of the Madrid protocol will fall in the proposed new requirements. However, it is actually anticipated that the USPTO will review procedures for designations which proceed to acceptance on the first instance in order that a US Attorney will 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 usa – our current practice of engaging a US Attorney to answer Office Actions on behalf of our local clients is not going to change.
A big change is set ahead into force for Australian trade mark owners, who, from 25 February 2019, will no longer 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 coming from a cross-claim of groundless or unjustified threats. However, this will soon no longer be possible.
This amendment towards the Trade Marks Act will bring consistency throughout the What Is A Patent, Designs Act, Plant Breeder’s Rights Act and also the Trade Mark Act, which so far, was the only real act to permit this defence. We expect that removing this section of the Trade Marks Act will permit the “unjustified threats” provisions from the Trade Marks Act to be interpreted similar to vuiatc Patents Act. Thus, we believe chances are that in the event that infringement proceedings are brought against a party that is ultimately found not to be infringing or perhaps the trade mark is found to be invalid, the trade mark owner will be deemed to get made unjustified or groundless threats.
Additionally, a whole new provision will likely be added to the How To Make An Invention Prototype With Inventhelp, 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 have made unjustified threats of proceedings for infringement. The legal court will consider numerous factors, including the conduct of the trade mark owner after making the threat, any benefit derived by the trade mark owner through the threat and also the flagrancy of the threat, in deciding whether additional damages should be awarded against the trade mark owner.