January 28, 2020,

USPTO Enacts New Rules for Foreign Trademark Applicants

The U.S. Patent & Trademark Office (USPTO) recently amended the Rules of Practice in Trademark Cases to require applicants, registrants, or parties to a trademark proceeding whose domicile (home) is not located within the United States (U.S.) 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 U.S. (including the District of Columbia or any Commonwealth or territory of the U.S.). This rule change went into effect on August 3, 2019.

Trademark application procedure. Trademark applicants can file and prosecute trademark applications on their own behalf. It is not necessary to hire an attorney to file a trademark application or other trademark proceeding. However, should an applicant choose to have another party act on their behalf before the USPTO, now that party must be an attorney who is an active member in good standing of any state bar in the U.S. The problems: Improper or invalid registrations. The USPTO has seen many instances of the unauthorized practice of law (UPL) where foreign parties who are not authorized to represent trademark applicants are improperly representing foreign applicants before the USPTO. As a result, increasing numbers of foreign applicants are likely receiving inaccurate or no information about the legal requirements for trademark registration in the U.S., such as the requirement for use of a mark in commerce, who can properly sign a trademark application on behalf of a trademark applicant or who the owner of a mark is under U.S. law. Trademark documents submitted in support of a registration must be signed by the appropriate responsible parties under penalty of perjury. If the documents are not signed by an authorized party, the resulting registration may be invalid. In addition, fraudulent or inaccurate claims of use jeopardize the validity of any resulting registration and may render the registration vulnerable to cancellation. Increased costs to all parties/lack of confidence in the accuracy of the trademark register. The potentially invalid registrations caused by the problems above can result in parties incurring unnecessary costs and unwarranted litigation. The public relies on the accuracy and integrity of the trademark register to determine whether or not a mark is available for use or registration. If someone finds a potentially confusingly similar mark on the register, they may incur significant costs to investigate the use of the mark to determine conflicts, initiating proceedings to cancel the mark or oppose the registration of the mark, or engaging in civil litigation to resolve a dispute over the mark. These costs could be incurred unnecessarily if the disclosed mark is not actually in use in U.S. commerce or is not in use in commerce in connection with all of the goods/services identified in the registration. The Solution. By requiring foreign parties to use a qualified U.S. attorney who is more familiar with the requirements of U.S. trademark law, the USPTO is hoping to prevent fraudulent and improper filings that could result in invalid trademark registrations and increase the accuracy of the trademark register.