On August 3, a new rule became effective at the U.S. Patent and Trademark Office (USPTO) requiring foreign-domiciled trademark applicants and registrants to be represented by an attorney who is licensed to practice law in the United States in trademark proceedings. The rule will prevent instances of unauthorized practice of law, which has resulted in inaccurate communications with foreign trademark applicants, potentially rendering many applications invalid.
As the final rule published in the Federal Register in early July notes, current mechanisms to enforce against unauthorized practice of law in trademark matters, including sanctions, have not been effective in cases involving foreign applicants. When a U.S.-licensed attorney engages in improper representation at the USPTO, that attorney can be excluded from further representation at the agency and face action from state bar associations and other federal agencies. Such actions do not pose a realistic threat against foreign actors though, and U.S. law enforcement may lack jurisdiction over such parties even when criminal charges for misconduct may be involved.
The difficult nature of properly disciplining foreign actors for misconduct is becoming more problematic because of a steady rise in trademark filings into the U.S. from foreign entities. The final rule in the Federal Register includes statistics showing that the percentage of all trademark filings coming from foreign applicants has risen from 19 percent in fiscal year 2015 to 26 percent in fiscal year 2017. At the same time, a growing number of foreign trademark applicants have opted for pro se representation instead of obtaining the services of licensed attorneys. In fiscal year 2015, 25.4 percent of foreign applicants filed pro se, while in fiscal year 2017 pro se representation grew to 44 percent.
In recent months, the USPTO has been vocal about the impact of bad faith registrations. In mid-June, Commissioner for Trademarks, Mary Boney Denison, delivered a statement that touched on the subject before the U.S. House of Representatives Subcommittee on Courts, Intellectual Property and the Internet. Commissioner Denison discussed the agency’s concerns over a "growing and significant number" of bad faith submissions containing false use claims or digitally altered specimens of use, which were coming from overseas applicants, especially from mainland China where 80 percent of U.S. trademark applicants file pro se.
If a foreign applicant filed a trademark application or submission prior to the new rule becoming effective and the submission is acceptable, the submission will be accepted.
Under the new rule, foreign-domiciled applicants are now required to use an attorney licensed in the U.S. to file all submissions, including those made through the Trademark Electronic Application System (TEAS). Foreign applicants also need U.S.-licensed representation for submissions made to the Trademark Trial and Appeal Board (TTAB) through the Electronic System for Trademark Trial and Appeals (ESTTA). If a foreign applicant filed a trademark application or submission prior to the new rule becoming effective and the submission is acceptable, the submission will be accepted. However, if responding to a USPTO office action filed prior to the new rule, foreign applicants must now obtain U.S. representation to file an acceptable response. At the TTAB, all proceedings involving foreign applicants will be suspended until U.S. representation is obtained.
For Canadian applicants having Canadian representation, the effect of the rules is slightly different. Canadian patent agents can no longer represent Canadian applicants in trademark matters at the USPTO. Canadian trademark attorneys and agents, if reciprocally recognized by the Office of Enrollment and Discipline (OED), may continue to serve as an additionally appointed practitioner for Canadian clients, however attorneys licensed in the U.S. must file formal submissions for those Canadian applicants.
Finding the right partner to navigate a rule change such as this is crucial for successfully registering and maintaining your trademark in the United States. Dennemeyer & Associates is here to help you stay in compliance with these new rules and all other agency rules. Our U.S. licensed attorneys provide legal guidance on diverse IP matters, from patents and trademarks to risk evaluation, global portfolio management and monetization strategies.
Steven Shape is a registered patent attorney and electrical engineer who has represented preeminent technology companies in complex, high-stakes intellectual property litigation and foreign patent and trademark prosecution matters since 1982.
Steven Shape has successfully represented clients in complex business litigation concentrating on patent infringement and defending infringement claims, trademark and Lanham Act claims, copyright claims, unfair competition claims, false advertising claims, trade secret claims and related antitrust and business causes. He has served as counsel in a number of jury and bench trials and has extensive experience in all aspects of Federal Court litigation including preliminary injunctions, summary judgments and appeals.
The authors contribute to this blog in their personal capacity. The views expressed are their own and do not necessarily represent the views of Dennemeyer IP Solutions, Dennemeyer & Associates, or Dennemeyer Consulting.