March 7, 2019
Brian Winterfeldt

Client Alert: The United States Wants YOU to be Represented Before the Patent and Trademark Office

The United States Patent and Trademark Office (the “Office”) has proposed a rule, on which a notice and comment period is now open, that would require all foreign trademark applicants and registrants to be represented by a United States licensed attorney. The proposed rule would amend the Rules of Practice in Trademark Cases:Representations of Others (37 CFR Parts 2 and 11) to require applicants,registrants, or parties to a proceeding whose “domicile is not located within the United States or its territories to be represented by an attorney who is an active member in good standing of the bar of the highest court of a state in the United States (including the District of Columbia and any commonwealth or territory in the United States).” Domicile is to be defined by an applicant’s principal place of business.

The Office desires two goals from the proposed rule:

(1)Instill greater confidence in the public that registrations in the United States issued to foreign applicants are not subject to invalidation for reasons such as improper signatures and use claims, and    

(2) Enable the Office to effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters

When the Office receives an application by a foreign domiciliary that does not comply with the proposed requirements, the applicant will be issued an Office Action. Like any other Office Action issued by the Office, the applicant will have six months to respond. Failure to comply with the Office Action will result in abandonment of the application. The Office is considering two proposals in issuing Office Actions. First, the Office could defer full examination of the application until U.S. counsel is appointed and therefore, satisfy the Office Action. Alternatively, the Office may proceed with a full examination of the application on the outset, and issue an Office Action that includes the requirement of domestic counsel along with other refusals and/or requirements the Applicant must correct. The latter option would expedite review of the application but would also require more resources than the first proposal.

The purpose of the proposed rule making, as explained by the Office, is to maintain the integrity of the register. The Office believes the proposed rule will strengthen the Office’s role in protecting consumers and safeguarding brands by reducing fraudulent filings. Trademark owners have experienced unnecessary costs and burdens when defending their marks against fraudulent applications. The Office noted a rise in pro-se applicants, foreign applicants, and pro-se foreign applicants over the past few years, and many of these applications fail to comply with U.S. law. At present, the Office does not allow foreign attorneys to represent foreign applicants in the United States with the exception of attorneys licensed in Canada. The proposed rule will not amend this exception.

Practitioners have also taken note of an increase in fraudulent filings from foreign applicants. In 2018, the Wall Street Journal reported an influx in fraudulent applications from Chinese citizens, noting Chinese citizens receive subsidies from the government for successful registrations in the United States. In many cases, it did not appear as though the applicants were actually intending on selling any goods or services in the U.S. market, occupying significant resources of trademark examiners and delaying legitimate applications made in good faith. The proposed rule would combat the increasing problem of inaccurate and possibly fraudulent submissions that violate the Office’s rules. Furthermore, many applications claim use in commerce, but use a mock-up or digitally altered specimen that indicates that the mark is the applicant’s product. Combating these filings has proved an onerous burden that taxes the Office’s valuable resources.

The current disciplinary mechanisms and sanctions are inadequate against foreign applicants producing fraudulent filings. Show cause orders issuing sanctions have been almost unenforceable on a party that is not subject to U.S. jurisdiction. The proposed rule would allow the Office to bring those disciplinary actions such as suspension, reprimand, or probation to a domestic practitioner before the Office of Enrollment and Discipline. This action may roll into further disciplinary actions in the state the practitioner is licensed in or other law enforcement agencies.

The proposed rule is similar to existing rules in several international jurisdictions, including Brazil, Chile, the People’s Republic of China, Israel,Japan, Jordan, Republic of Korea, Morocco, South Africa, and the European Union’s Intellectual Property Office. While these nations have been an excellent example for the effectiveness of this requirement, the proposed rule has not been without its critics, who express concern over how the final rule in the United States will coexist with the Madrid Protocol. The United States is a member state to the Madrid Protocol, an international treaty that allows a party to file a trademark application in their home country and have protections span across a number of member states. In order to address this concern, the Office is considering temporarily waiving the requirement to appoint a domestic attorney on all applications made under the Madrid Protocol.This waiver would only be in effect until the International Bureau of the World Intellectual Property Organization passes an amendment to allow for a designation of a U.S. attorney.

The Office of the Federal Register will be accepting comments until March 18, 2019. Comments are accepted directly at TMFRNotices@uspto.gov ;by mail to the Commissioner for Trademarks, P. O. Box 1451, Alexandria, VA 22313-1451, to the attention of Catherine Cain; or on the Federal e-Rule making Portal. Submissions should include the designated docket number for this matter: PTO-T-2018-0021. Comments will be publicly available for inspection, and therefore should not include information that is not desired to be made public.

We hope this overview provides you with timely insight to important developments within the trademark policy space. Please feel free to reach out to us if you have any questions. Thank you for your participation.

For further information regarding the content of this article, please contact Winterfeldt IP Group at + 1 202 7595850 or trademarks@winterfeldt.law.