The USPTO recently proposed changes which will 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 through a Notice of Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who would otherwise be permitted to file trade marks directly with the USPTO without engaging an authorized US attorney.
The NPR Summary reads: The United States Patent and Trademark Office (USPTO or Office) proposes to amend the guidelines of Practice in Trademark Cases as well as the rules regarding Representation of Others Before the How Do You Patent An Idea With Inventhelp and Trademark Office to require applicants, registrants, or parties to some proceeding whose domicile or principal place of work is not really located within the usa (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to be represented by legal counsel who may be an active member in good standing in the bar from the highest court of the state inside the U.S. (including the District of Columbia and then any Commonwealth or territory in the U.S.). A requirement that such foreign applicants, registrants, or parties be represented by a qualified U.S. attorney will instill greater confidence in the public that U.S. registrations that issue to foreign applicants are certainly not subjected to invalidation for reasons such as improper signatures and use claims and allow the USPTO to more effectively 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 numerous licensed US attorneys that will continue to aid in expanding protection in our client’s trade marks into america. No changes to these arrangements will be necessary and that we remain offered to facilitate US trade mark applications on behalf of our local clients.
United States Of America designations filed by way of the Madrid protocol will fall within the proposed new requirements. However, it really is anticipated the USPTO will review procedures for designations which proceed to acceptance on the first instance in order that a US Attorney will not need to be appointed in cases like this. Office Actions will have to be responded to by qualified US Attorneys. This change will affect self-filers into america – our current practice of engaging a US Attorney to respond to Office Actions for our local clients is not going to change.
A big change is set ahead into force for Australian trade mark owners, who, from 25 February 2019, will not be in a position to 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 towards the Trade Marks Act will bring consistency over the Inventhelp Inventions Store, Designs Act, Plant Breeder’s Rights Act and also the Trade Mark Act, which so far, was the only real act to permit this defence. We expect that removing this portion of the Trade Marks Act will permit the “unjustified threats” provisions from the Trade Marks Act to get interpreted much like vuiatc Patents Act. Thus, we feel chances are that in the event infringement proceedings are brought against a party who may be ultimately found never to be infringing or perhaps the trade mark is found to get invalid, the trade mark owner is going to be deemed to have made unjustified or groundless threats.
In addition, a brand new provision will likely be put into the Inventhelp Commercial, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the energy to award additional damages when one is deemed to have made unjustified threats of proceedings for infringement. The court will consider several factors, like the conduct from the trade mark owner after making the threat, any benefit derived by the trade mark owner from your threat and the flagrancy from the threat, in deciding whether additional damages should be awarded from the trade mark owner.