On July 2, 2019, the United States Patent and Trademark Office (USPTO) announced a new rule that all trademark applicants and registrants whose domicile or principal place of business is not located within the United States must 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. This rule becomes effective on August 3, 2019.
The rule was enacted in response to the growing number of foreign pro se trademark applicants and registrants who appear to be filing inaccurate and potentially fraudulent applications and other documents.
These problematic submissions include false statements and declarations of use wherein applicants and registrants claimed use of their respective trademarks on a wide variety of unrelated goods across a number of classes, digitally altered specimens of use and mocked-up specimens. For example, foreign pro se applicants have been caught filing specimens of use which consist of a digitally altered copy of a registrant's previously filed specimen with the registrant's trademark replaced by the foreign entity's trademark.
It is believed that requiring a qualified U.S. attorney to represent foreign applicants and registrants will reduce the number of inaccurate and potentially fraudulent filings. That is because an attorney admitted in the United States is presumably more familiar with the USPTO's rules and can guide foreign clients accordingly. In addition, an attorney admitted to a state bar is subject to discipline by both the USPTO and state disciplinary authorities. On the other hand, a pro se foreign filer is largely immune from discipline other than the rejection of its application or cancellation of its registration.
The new rule will not immediately impact applications filed before August 3, 2019 or existing registrations. However, if an application filed before August 3 becomes the subject of an office action issued after that date, the applicant will be required to designate an attorney licensed in the United States when responding to the office action. Similarly, registrants will not need to appoint a qualified United States attorney until they file declarations of continued use under Section 8 of the Lanham Act or renewal applications under Section 9. After August 3, all filings not in compliance with this rule will receive an office action. In addition, foreign filers using a TEAS Plus application, the least expensive and most popular application used by foreign filers, will be unable to submit the application unless the domestic representative section of that online form is completed.
The one exception to this rule is applications filed under the Madrid Protocol that are submitted with all formalities and statutory requirements already satisfied, and thus are ready for publication. However, according to USPTO statistics from 2017, only 2.9% of Madrid applications are ready for publication upon filing. For the other 97.1% of applications filed under the Madrid Protocol which receive an office action, the applicant will be required to designate an attorney licensed in the United States when responding to the office action.
Finally, this rule brings the United States in line with countries such as Brazil, Chile, the People's Republic of China, Israel, Japan, Jordan, Republic of Korea, Morocco and South Africa, as well as the European Union's Intellectual Property Office, which all require foreign applicants to designate a local attorney in connection with all trademark applications.
|Rosenberg, Mark J. Partner and Co-Chair of Reputation Management Practice||Partner and Co-Chair of Reputation Management Practice||212.216.1127|