The USPTO recently proposed changes which would 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 by way of a Notice of Invention Idea Help on 15 February 2019, will affect foreign applicants who would otherwise be permitted to submit trade marks directly with the USPTO without engaging a certified US attorney.
The NPR Summary reads: The United States Patent and Trademark Office (USPTO or Office) proposes to amend the principles of Practice in Trademark Cases and also the rules regarding Representation of Others Before the United States Patent and Trademark Office to require applicants, registrants, or parties to a proceeding whose domicile or principal place of work is not located within the usa (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to become represented by a lawyer who may be a dynamic member in good standing from the bar of the highest court of a state within the U.S. (like the District of Columbia and then any Commonwealth or territory of the U.S.). A requirement that such foreign applicants, registrants, or parties be represented by way of a qualified U.S. attorney will instill greater confidence within the public that U.S. registrations that issue to foreign applicants usually are not susceptible to invalidation for reasons including improper signatures and make use of claims and allow the USPTO to better 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 who can still assist with expanding protection of our own client’s trade marks into the United States. No changes to these arrangements will likely be necessary so we remain offered to facilitate US trade mark applications for our local clients.
United States designations filed by way of the Madrid protocol will fall within the proposed new requirements. However, it is anticipated that this USPTO will review procedures for designations which proceed right through to acceptance at the first instance in order that a US Attorney need not be appointed in this instance. Office Actions must be responded to by Inventhelp Caveman Commercial. This change will affect self-filers into the United States – our current practice of engaging a US Attorney to answer Office Actions for our local clients is not going to change.
A big change is placed to come into force for Australian trade mark owners, who, from 25 February 2019, will no longer be able to rely on the commencement of infringement proceedings being 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 not be possible.
This amendment to the Trade Marks Act brings consistency over the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act as well as the Trade Mark Act, which so far, was the only real act to enable this defence. We expect that the removing of this portion of the Trade Marks Act will permit the “unjustified threats” provisions from the Trade Marks Act to be interpreted similar to the Patents Act. Thus, we feel it is likely that in case infringement proceedings are brought against an event afhbnt is ultimately found never to be infringing or even the trade mark can be found to become invalid, the trade mark owner will be deemed to have made unjustified or groundless threats.
In addition, a new provision is going to be added to the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording a legal court the ability to award additional damages in case an individual is deemed to get made unjustified threats of proceedings for infringement. The court will consider a number of factors, including the conduct from the trade mark owner after making the threat, any benefit derived through the Ideas For Inventions through the threat and the flagrancy from the threat, in deciding whether additional damages have to be awarded from the trade mark owner.