The United States Patent and Trademark Office (“USPTO”) has recently issued a notice of proposed rulemaking that would require all foreign-domiciled trademark applicants, registrants, and parties to TTAB proceedings to be represented by a US licensed attorney. The proposed rule is designed to protect the integrity of the US Trademark Register and address the uptick in the number of flawed and fraudulent applications being filed pro se. The majority of these applications appear to be coming from Chinese applicants motivated by subsidies provided by local municipalities in China. The Chinese government itself has disclaimed responsibility.
What other changes are included in this proposed rule?
Aside from requiring foreign-domiciled applicants to retain US counsel to represent them before the USPTO, the proposed rule would also include several other changes to current practice, including the following:
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The proposed rule also applies to all foreign-based corporations whose principal place of business is not located within the US;
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The proposed rule would eliminate going forward the current reciprocal recognition of Canadian trademark attorneys and agents, while grandfathering in those attorneys already found competent to practice before the USPTO;
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The proposed rule would also affect US licensed attorneys, requiring any US attorney representing foreign applicants to be in good standing in at least one of the 50 states of the US, the District of Columbia, or any Commonwealth or territory of the US;
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Madrid applications would also be subject to the US counsel requirement, except where such applications satisfy all legal formalities (including specification issues) and are appropriate for publication upon first action (in FY 2017, this only occurred 2.9% of the time).
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The PTO is considering whether to suspend non-compliant applications immediately after filing pending appointment of a U.S. counsel or waiting until issuance of the first action to impose such requirement.
What solutions are available to foreign-based applicants?
If adopted, the proposed rule would not go into effect until the Fall of 2019. The USPTO is currently accepting comments on the proposed rule until March 18, 2019.
In the event that the proposed rule is adopted, foreign applicants should prepare by retaining qualified US counsel to prevent prosecution delay.
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