According to the USPTO Commissioner of Trademarks, the United States Patent and Trademark Office (USPTO) has seen a significant increase in the number of applicants who are not fulfilling their legal and ethical obligations to file accurately and in good faith, particularly with respect to claims that the mark is in use in commerce. After studying the problem, the USPTO made two changes in application procedures designed to improve the overall quality of applications: (1) a new rule requiring foreign trademark applicants and registrants to be represented by a US-licensed lawyer, and (2) a new Examining Guide focused on detecting and rejecting falsified purported specimens of use in commerce. Applicants can expect a higher level of scrutiny of their applications, particularly where the applicant is based outside the United States.
The new rule: US federal trademark rules now require that foreign-domiciled trademark applicants, registrants, and parties to the Trademark Trial and Appeal Board proceedings hire a US-licensed lawyer to represent them at the USPTO. This is a departure from the prior rule that allowed Canadian patent agents to represent Canadian trademark parties before the USPTO in trademark matters. Under the new rule, eligible Canadian trademark lawyers and agents can be appointed as additional practitioners representing their Canadian clients. However, in these cases, the USPTO will correspond only with the appointed US-licensed lawyer. In addition, foreign-domiciled applicants, registrants, or parties may not make their own submissions to the USPTO without a US-licensed lawyer.
To ensure that it is a US-licensed lawyer representing a party before the USPTO in a trademark matter, the rule further requires that the lawyer confirm they are an active member in good standing of a US state bar and provide the year of admission and bar membership number. To ensure compliance, the forms on the USPTO’s online Trademark Electronic Application Systems (TEAS) now requests this information, and effective October 5, the USPTO will accept only electronic submissions using TEAS.
This rule went into effect on August 3, 2019.
Why the rule change? The USPTO reports that the rule change is in response to the increasing number of incorrect and possibly fraudulent submissions at the USPTO filed by foreign-based applicants without US legal representation. These submissions do not comply with US trademark law or the USPTO’s rules. As the USPTO may discipline US-licensed lawyers for improper and fraudulent acts, the USPTO hopes this rule change will be a tool to enforce compliance by all applicants and registrants with US trademark law and USPTO regulations.
The USPTO further explained that this rule is consistent with the existing practice in other countries of requiring foreign-domiciled trademark applicants and registrants to obtain local counsel. Mary Boney Denison, the USPTO Commissioner for Trademarks, stated “[m]any other countries worldwide have had this requirement for decades. We believe that this new rule will help improve the quality of submissions to the USPTO.”
In a related development, the World Intellectual Property Organization (WIPO) announced that this new requirement of the USPTO does not apply before the International Bureau of WIPO. That is, users of the Madrid System are not required to be represented by a US-licensed lawyer.
Learn more about this US federal trademark law change.
The new guide: The USPTO issued a July 2019 supplement to the existing Examination Guide to address the submission of fake specimens that are digitally created/altered or are mockups. The purpose of this new guide is to provide additional procedures that assist examiners in identifying and refusing suspicious specimens. Examiners must carefully evaluate each specimen and its description for signs of fraud. As indicated in the new guide, when a specimen is rejected, the Examiner may gather evidence through their own research as well as require the following additional information:
(1) the goods or services for which the specimen was submitted;
(2) whether the specimen was created for submission with the application and if so, when;
(3) the source of the image depicting goods;
(4) how the mark is used on goods in the actual sales environment or in the rendering or performing the services, including representative examples showing such use and URLs and publication dates for web pages;
(5) when the goods or services were first available for purchase and whether they are still for sale;
(6) proof of sales in commerce with or within the United States for the goods in the specimen and dollar amounts of sales;
(7) proof of use for additional goods or services identified in the application; or
(8) any other relevant information.
The guide also states, “If the applicant satisfactorily responds to all requests for information and the original or substitute specimen does not contradict the response, the specimen must be accepted.”
Learn more about the "Examination of Specimens for Use in Commerce: Digitally Created or Altered and Mockup Specimens.”
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