18 February 2019Trademarks

USPTO may force foreign TM applicants to use US attorneys

The US Patent and Trademark Office (USPTO) has issued a proposal which would require foreign-domiciled trademark applicants and registrants to use a US attorney.

On Friday, February 15, the office published the  proposal to change federal trademark law, in a move that legitimate domestic and foreign brand owners should welcome, according to Robert LeBlanc, a senior associate at Haynes and Boone’s Dallas office.

The requirement is being proposed in response to the increasing problem of foreign trademark applicants who purportedly act pro se (where the applicant represents himself) and are filing inaccurate and possibly fraudulent submissions.

“Requiring a US attorney to represent foreign applicants will certainly help curtail the massive wave of fraudulent trademark filings that the trademark register has seen in recent years,” said LeBlanc.

This representation requirement will “instil greater confidence in the public that US registrations that issue to foreign applicants are not subject to invalidation for reasons such as improper signatures and use claims”, said the USPTO.

The proposed changes would require foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to use an attorney who is licensed to practice law in the US.

US attorneys who represent clients in trademark matters before the USPTO will also be required to confirm that they are an “active member in good standing of their bar and provide their bar membership information”, according to the office.

Goals of the rule change include increasing customer compliance with federal trademark law and ensuring the accuracy of submissions and the integrity of the US trademark register.

LeBlanc added: “There can be no doubt that the rule change will also substantially increase business for US trademark lawyers. From the USPTO’s (conservative) estimates, nearly $100 million dollars in new prosecution business could be driven to US lawyers annually.”

However, there’s likely to be some pushback against the proposed change, particularly from foreign applicants that use the Madrid System to file in the US. They may see cost increases for filings that designate the US.

“Currently, many foreign applicants utilise Madrid as a cost-savings mechanism to avoid having to engage local counsel in each designated jurisdiction. Madrid applicants are certain to see less value/savings associated with these filings if the proposed rule change goes into effect,” said LeBlanc.

The rule change brings the US in line with foreign jurisdictions including Brazil, Chile, China and the European Union, which all require a local attorney to file applications.

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