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PTO Proposes U.S. Counsel Requirement for Foreign Domiciled Trademark Applicants And Registrants 

by Eric Fingerhut, Jennifer Fraser, Marsha Gentner

Published: February, 2019

Submission: March, 2019


Goal Is to Improve Accuracy and Reduce Potentially Invalid Registrations

On February 14, 2019, the United States Patent and Trademark Office (PTO) issued aNotice of Proposed Rulemaking(“NPRM”) to require foreign domiciled trademark applicants and registrants to be represented by a licensed U.S. attorney at the PTO. The comment period on the NPRM is open until March 18, 2019.

The NPRM explained the new requirement will serve the following goals:

  1. “instill greater confidence in the public that U.S. registrations that issue to foreign applicants are not subject to invalidation for reasons such as improper signatures and use claims,” and
  2. “enable the USPTO to more effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters.”

As part of the NPRM, the PTO cited the costs and burdens of investigating and challenging invalid claims of use of a mark in U.S. commerce and noted the surge in questionable foreign filings and issues involving the unauthorized practice of law by foreign parties who might be providing inaccurate information about legal requirements in the U.S. Such inaccurate claims or invalid signatures can render registrations invalid and negatively impact the integrity of the trademark register.

Currently, foreignpro seapplicants and non-U.S. companies can handle their own filings, as can authorized Canadian practitioners, but the proposed rule would change this practice. Canadian trademark agents and attorneys could still practice before the PTO for Canadian parties, but rules for Canadian patent agents would change.

Under the proposed rules, submissions would be made by practitioners subject to the disciplinary jurisdiction of the PTO and state bars, making it less likely filings would be signed by unauthorized parties or contain inaccurate statements.

While the Madrid System does not currently have a designation for U.S. attorneys, the rule would not apply to initial Requests for Extension of Protection at least until an Office Action issued (which happens in most cases). The PTO is seeking comments to address Madrid cases where no Office Action issues as well as other applications not filed through Madrid (e.g., defer examination until U.S. counsel is appointed or issue a full Office Action).

This NPRM follows other recent rulemaking for mandatory electronic filings and other efforts to combat fraud, including the post-registration Audit (reported here) and reports of improper changes of address. The PTO reports recent fraudulent address changes, presumably to obtain “verification codes” for the Amazon Brand Registry. The PTO is contacting counsel in suspicious cases, but this is difficult to monitor and detracts from other PTO goals, including timely examination.

Dykema attorneys have taken steps to monitor their filings and to work with clients on issues encountered on online retail sites. Because fraudulent filings clog the register and create other enforcement issues, Dykema attorneys are using PTO procedures to report improper specimens and challenge other problematic filings. Please contact Dykema’s trademark attorneys if you have any questions on the proposed changes or other issues related to addressing improper filings.








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