USPTO drops controversial ‘proof of residence’ rule
The US Patent and Trademark Office (USPTO) has dropped guidelines requiring foreign trademark applicants to provide documentation verifying their immigration status.
In July, the USPTO announced new rules, effective August 3, requiring all foreign-domiciled trademark applicants to be represented by an attorney licensed to practice law in the US.
The original guidance issued to trademark examiners prompted concerns that applicants would need to provide proof of legal residency in the US.
“Foreign citizens must comply with US visa immigration laws to claim the US as their permanent legal residence,” the guidance stated.
One USPTO examiner told Boston-based broadcaster WGBH that the rules in that form would mean that “any immigrant who does not have a green card will likely be unable to obtain a trademark registration, even if they hire an attorney in compliance with the new rule requiring US counsel”.
“Trademark examiners are now required to ask questions about the immigration status of applicants living in the US that have never been asked of applicants before,” they said.
The USPTO has now issued revised guidance which omits reference to applicants’ permanent legal residence status.
Immigration status
The original rules raised fears that the USPTO was being asked to enforce immigration law.
In a statement sent to WGBH at the time, the office said it did “not require immigration status as part of an application”.
Some examiners, however, feared that the guidance effectively required them to ask for proof of legal residency.
The new rules are aimed at tackling bad faith trademark registrations, amid a spike in what the US said were fraudulent applications.
Speaking at the time, USPTO director Andrei Iancu said that the new rules marked a “significant step in combating fraudulent submissions”.
“In order to maintain the accuracy and integrity of the register, for the benefit of all its users, the USPTO must have the appropriate tools to enforce compliance by all applicants and registrants,” he added.
The integrity of information on its records has been a source of concern for the USPTO. Last month, the office issued a warning that bad actors were using its e-filing system to make unauthorised changes to attorney information.
The USPTO urged attorneys to monitor their details, and report any unauthorised changes.
The office also said it would look to authenticate all changes to primary email correspondence before approving them.
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