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 means of a Notice of Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who will otherwise be allowed 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 guidelines of Practice in Trademark Cases and also the rules regarding Representation of Others Prior to the How To Get A Patent For An Idea to require applicants, registrants, or parties to some proceeding whose domicile or principal workplace is not really located within the usa (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to get represented by an attorney that is an energetic member in good standing of the bar from the highest court of the state inside the U.S. (such as the District of Columbia as well as any Commonwealth or territory in the U.S.). A requirement that such foreign applicants, registrants, or parties be represented with a qualified U.S. attorney will instill greater confidence inside the public that U.S. registrations that issue to foreign applicants are certainly not susceptible to invalidation for reasons such as improper signatures and utilize claims and allow the USPTO to more efficiently 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 in our client’s trade marks into the usa. No changes to such arrangements will be necessary and we remain accessible to facilitate US trade mark applications for 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 that this USPTO will review procedures for designations which proceed through to acceptance on the first instance to ensure that a US Attorney need not be appointed in this situation. Office Actions will need to be responded to by qualified US Attorneys. This transformation 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 large change is placed ahead into force for Australian trade mark owners, who, from 25 February 2019, will no longer be in a position 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 no longer be possible.

This amendment towards the Trade Marks Act brings consistency throughout the How To Patent Ideas, Designs Act, Plant Breeder’s Rights Act and also the Trade Mark Act, which up to now, was the only real act to enable this defence. We expect that the removal of this portion of the Trade Marks Act will allow the “unjustified threats” provisions of the Trade Marks Act to get interpreted similar to the Patents Act. Thus, we know chances are that in case infringement proceedings are brought against a celebration who fwhdpo ultimately found never to be infringing or even the trade mark can be found to become invalid, the trade mark owner will likely be deemed to get made unjustified or groundless threats.

In addition, a whole new provision will likely be put into the Reviews For Inventhelp, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the court the energy to award additional damages when an individual is deemed to have made unjustified threats of proceedings for infringement. The legal court will consider numerous factors, including the conduct from the trade mark owner after making the threat, any benefit derived by the trade mark owner through the threat as well as the flagrancy in the threat, in deciding whether additional damages are to be awarded from the trade mark owner.