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 will otherwise be allowed to submit trade marks directly with the USPTO without engaging a licensed US attorney.
The NPR Summary reads: The Usa 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 Before the Inventhelp Products to require applicants, registrants, or parties to your proceeding whose domicile or principal place of business is not located within the usa (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to be represented by an attorney who is a dynamic member in good standing of the bar in the highest court of a state inside the U.S. (like the District of Columbia as well as any Commonwealth or territory in the U.S.). A requirement that such foreign applicants, registrants, or parties be represented by 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 such as improper signatures and use 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 numerous licensed US attorneys who can still aid in expanding protection of our client’s trade marks into america. No changes to such arrangements is going to be necessary so we remain offered to facilitate US trade mark applications for our local clients.
United States designations filed through the Madrid protocol will fall within the proposed new requirements. However, it really is anticipated the USPTO will review procedures for designations which proceed through to acceptance at the first instance in order that a US Attorney need not be appointed in this instance. Office Actions will have to be responded to by qualified US Attorneys. This transformation will affect self-filers into america – our current practice of engaging a US Attorney to respond to Office Actions on the part of our local clients is not going to change.
A large change is placed 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 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 can soon no longer be possible.
This amendment towards the Trade Marks Act will bring consistency over the Product Ideas, Designs Act, Plant Breeder’s Rights Act and also the Trade Mark Act, which up to now, was the sole act to allow this defence. We expect that the removing of this area of the Trade Marks Act allows the “unjustified threats” provisions from the Trade Marks Act to be interpreted just like the Patents Act. Thus, we believe 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 is found to be invalid, the trade mark owner is going to be deemed to possess made unjustified or groundless threats.
Furthermore, a brand new provision will be added to the New Ideas For Inventions, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the power to award additional damages in case a person is deemed to possess made unjustified threats of proceedings for infringement. The legal court will consider numerous factors, such as the conduct from the trade mark owner after making the threat, any benefit derived from the trade mark owner from your threat as well as the flagrancy from the threat, in deciding whether additional damages are to be awarded from the trade mark owner.