Thursday, October 25, 2018

USPTO Proposes Rule Change Requiring Foreign Applicants Be Represented By US Licensed Attorney

The USPTO is proposing to change the Trademark Rules of Practice to require that foreign applicants be represented by a U.S. licensed attorney. [IMHO, this proposal appears to be a reaction to the flood of applications filed by Chinese individuals, and is designed to improve the quality of these application both by the efforts of the U.S. attorney representing the applicant, and by the enforcement of the USPTO disciplinary rules to hold the attorney accountable.] According to the announcement (here) a Notice of Proposed Rulemaking will be published on November 1, 2018, followed by a three-month comment period.


The United States Patent and Trademark Office (USPTO) proposes to amend its rules to require foreign trademark applicants and registrants to be represented by a U.S. licensed attorney, i.e. an attorney in good standing of the bar of the highest court of a State in the U.S. (including the District of Columbia and any Commonwealth or territory of the U.S.) to file trademark documents with the USPTO. A requirement that foreigners be represented by a U.S. licensed attorney will (i) ensure that the USPTO can effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters; (ii) provide greater confidence to foreign applicants and the public that registrations that issue to foreign applicants are not subject to invalidation for reasons such as improper signatures and use claims; and (iii) aid USPTO efforts to improve accuracy of the U.S. Trademark Register.

Read comments and post your comment here.

Text Copyright John L. Welch 2018.


At 6:37 AM, Anonymous Michael Hall said...

In Fiscal Year 2018, about 9% of all filings came from China.

At 7:40 AM, Anonymous Anonymous said...

Are many of these Chinese filings pro-se, or are they coming in via Madrid without U.S. counsel? Will Madrid applicants into the U.S. have to designate U.S. counsel (and not just if they need to respond to an Office Action)? Also, is this going to impact reciprocity with permitting Canadian attorneys to practuce here?

At 12:11 PM, Anonymous Anonymous said...

Many are pro se.

Also seeing baseless cancelations being filed by China-based entities. A lot of this has to do with Amazon opening up its platform to China-based sellers and Chinese are trying to get their trademarks registered to take advantage of some additional brand protections offered by Amazon. (Brand Registry isn't super helpful.)

At 2:19 PM, Anonymous Anonymous said...

What about Canada?

At 5:57 PM, Anonymous Anonymous said...

I ran a few searches on TESS and noticed that there are several applications that were recently filed NOT on the basis of Section 66 (Madrid) with the attorney of record listed as foreign counsel from other countries besides Canada (and yes, some where located in China). A number of these applications even issued straight to registration with foreign counsel still listed as the attorney of record (with the bases for registration as 1A or 44E). I was under the impression that the U.S. only had a reciprocation agreement with Canada so I find this all fascinating. If, however, there are specific attorneys that live and work at overseas law firms but are also in good standing with a U.S. State Bar, wouldn't the current filings be considered appropriate??? Must the attorney/firm have a U.S. address, not just be in good standing with a U.S. State Bar? In any event, I look forward to reading the proposed Rule when it issues for clarification.

At 12:52 PM, Anonymous John Egbert said...

It is a good thing. We are seeing many responses to office actions signed pro se by foreign applicants. It is usually the agent for the company that signs on behalf of the company as "General Manager".


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