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 way of a Notice of Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who will otherwise be permitted to file 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 as well as the rules regarding Representation of Others Before the Inventhelp Office Locations to require applicants, registrants, or parties to a 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 become represented by legal counsel who is a dynamic member in good standing in the bar from the highest court of any state in the U.S. (including the District of Columbia as well as any Commonwealth or territory of the U.S.). A requirement that such foreign applicants, registrants, or parties be represented with a qualified U.S. attorney will instill greater confidence inside the public that U.S. registrations that issue to foreign applicants usually are not subject to invalidation for reasons like improper signatures and make use of claims and enable the USPTO to more efficiently 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 who will continue to help with expanding protection of our client’s trade marks into the United States. No changes to these arrangements will be necessary so we remain accessible to facilitate US trade mark applications on behalf of our local clients.
U . S . designations filed by way of the Madrid protocol will fall in the proposed new requirements. However, it really is anticipated that this USPTO will review procedures for designations which proceed to acceptance on the first instance to ensure that a US Attorney need not be appointed in cases like this. Office Actions must be responded to by qualified US Attorneys. This change will affect self-filers into america – our current practice of engaging a US Attorney to answer Office Actions for our local clients will never change.
A big change is set ahead 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 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 to the Trade Marks Act will take consistency throughout the Invent Help Patent Information, Designs Act, Plant Breeder’s Rights Act as well as the Trade Mark Act, which until now, was the sole act to enable this defence. We expect that removing this area of the Trade Marks Act will allow the “unjustified threats” provisions of the Trade Marks Act to get interpreted just like the Patents Act. Thus, we know chances are that in the event that infringement proceedings are brought against an event who fwhdpo ultimately found not to be infringing or even the trade mark is found to get invalid, the trade mark owner will be deemed to get made unjustified or groundless threats.
In addition, a new provision will be included in the Inventhelp Company, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the court the power to award additional damages in the event that an individual is deemed to have made unjustified threats of proceedings for infringement. A legal court will consider a number of factors, such as the conduct of the trade mark owner after making the threat, any benefit derived through the trade mark owner from the threat and also the flagrancy in the threat, in deciding whether additional damages are to be awarded against the trade mark owner.