Thousands of Tainted Foreign-Based Applications Prompt a USPTO Notice of Proposed Rulemaking to Require Non-U.S. Applicants to Hire U.S. Attorneys

Responding to a recent flood of filings by foreign-based applicants — “with the estimated number of total tainted applications now in the tens of thousands,” and steadily growing — the United States Patent and Trademark Office (USPTO) is proposing a rule that would require non-US applicants to hire a licensed U.S. attorney to prosecute their trademark or service mark application. While increased trademark filings are naturally desirable and generally a goal of the USPTO, the USPTO has found this increase is negatively impacting the trademark Register because large quantities of applications are arguably attempting to defraud the USPTO into granting undeserved registrations, are being prosecuted by non-attorney representatives (constituting unauthorized practice of law), and oftentimes contain gross deficiencies like false evidence of mark usage. Moreover, if the representative repeatedly prosecuting these applications is not a U.S. attorney, the USPTO’s ability to impose effective sanctions and enforce its rules against those filers is limited.

The Notice of Proposed Rulemaking issued on February 15, 2019 and is believed to effectively address these problems because representation in all trademark matters before the USPTO and the Trademark Trial and Appeal Board (TTAB) by a licensed U.S. attorney should: (1) foster greater compliance with statutory and regulatory requirements of U.S. trademark law by those more familiar with the USPTO’s rules; and (2) bolster enforcement mechanisms and sanctions for non-compliance with those rules because the USPTO has the ability to remove a practitioner’s license; (3) thereby instilling greater confidence in the validity of registered marks and restoring and revitalizing the integrity of the federal trademark Register.

Under the new rule, non-compliant applications would be refused for failing to meet the requirement of U.S. attorney representation in a typical-Office-action refusal format with the statutory 6 months to correct this issue and respond. Whether the rule will (1) defer complete examination of an application until a U.S. attorney is hired, or (2) conduct a complete examination and issue an Office action “that includes the U.S. attorney requirement along with other applicable refusals,” remains open to debate in the public comments. The USPTO has invited public comment until March 18, 2019, on the proposition’s contents overall. Comments can be made in a variety of ways, with a direct submission form and alternative options provided in the Federal Register.

Controversially, this means more technical barriers to entry for non-U.S. applicants but probably also higher quality standards at all levels of trademark prosecution and TTAB enforcement. The U.S. would not be the only country with this requirement, however: Brazil, Chile, the People’s Republic of China, Israel, Japan, Jordan, the Republic of Korea, Morocco, South Africa, and the European Union’s Intellectual Property Office already impose a rule of this sort.

The USPTO also makes a point in its Federal Register notice that this rule is expected to help small businesses. Specifically, there will be a more reliable register which, in turn, will likely reduce costs and burdens associated with selecting a mark, litigating a mark, investigating actual use of a conflicting mark, or deciding whether to alter business plans related to a mark altogether.

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Posted in: Trademark