“A necessary move” - USPTO to require foreign trademark applicants to use US attorneys

• USPTO new rule regarding foreign-domiciled applicants, registrants and TTAB parties
• Rule will require them to be represented by a US attorney, and will be effective Aug 3
• Experts tell WTR the new rule is “necessary” due to rampant fraud on the register

The United States Patent and Trademark Office (USPTO) has amended its rules and will soon require foreign-domiciled applicants, registrants and parties to Trademark Trial and Appeal Board (TTAB) proceedings to be represented by a US licensed attorney. Talking to WTR, experts say this change is needed due to the US trademark register being “flooded with fraudulent applications from foreign nationals over the past five years”.

The USPTO first considered a policy change to require applicants from outside of the United States to hire US counsel in July 2018. At that time, Eric Perrott, a trademark and copyright attorney with Gerben Law Firm in Washington DC, argued in a WTR column that such a move “would help maintain the integrity of the US trademark register”.

A few months later, the USPTO published its detailed 10,000-word proposal to change federal trademark law to require foreign-domiciled trademark applicants, registrants and parties to TTAB proceedings, to use an attorney who is licensed to practice law in the United States. It gave the trademark community one month to send comments about the proposal.

Now, the USPTO has officially announced it has amended its rules of practice and has passed the proposal. It will be effective from August 3 2019. According to the USPTO’s press release, the move “will instill greater confidence in the public that US trademark registrations issued to foreign applicants are not subject to invalidation for reasons such as improper signatures and use claims, and enable the USPTO to more effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters”.

On top of that, the move is another measure the registry is implementing to combat fraudulent trademark applications, especially using fake specimens of use. Indeed, WTRrecently published an exclusive investigation that revealed the scale of suspicious specimens at the USPTO despite measures taken to combat them by the office. In response, the USPTO pledged to bolster efforts to tackle improper behaviour.

According to experts we spoke to, this new measure could be key to successfully combating suspicious specimens. Douglas Wolf, who chairs the trademark & copyright group at Wolf Greenfield, told us that “the expectation is that it will help to substantially eliminate fake specimens”, adding: “Obviously, the USPTO is relying on the US-licensed attorneys to challenge their clients on whether a specimen is legitimate or whether use exists for all goods and services in the identification. More difficult will be determining whether a client has a bona fide intent to use a mark at filing.”

In agreement with that view is Josh Gerben, principal of Gerben Law Firm: “I firmly believe that implementation of this rule was a necessary move by the USPTO. The US trademark register has been flooded with fraudulent applications from foreign nationals over the past five years. These fraudulent applications have jeopardised the integrity of the US trademark register and have caused undue delay and additional costs for many businesses in obtaining valuable trademark rights. Therefore, by requiring a US attorney to represent a foreign national, the USPTO is leveraging the ethical responsibilities of private attorneys to ensure the filings submitted to the USPTO are legitimate. If any attorney submits applications containing fraudulent specimens or claims, they could face disciplinary action by the USPTO.”

Of course, there are concerns about the rule change. Two of the primary criticisms are related to perceived discrimination by the registry and the increased cost for foreign applicants. To the first, the USPTO responded that it “disagrees” that the rule discriminates against foreign-domiciled applicants and registrants because it currently has no effective mechanism to sanction such parties for violations. On top of that, the office points out that “a significant number of trademark offices around the world require foreign-domiciled applicants and registrants to obtain local counsel as a condition for filing papers with those trademark offices”.

On increased costs, the registry acknowledges this, but adds that the rule “provides qualitative value to all applicants and registrants, as well as to consumers, because it will result in a more accurate and reliable trademark register”. Indeed, Gerben tells us that he believes “the rule will make obtaining a trademark registration in the US easier for legitimate applicants”.

Time will tell, then, whether this rule change will lead to a significant drop in fraudulent applications filed to the USPTO. However, it appears to have passed on some of the responsibility for the US trademark register’s integrity to the hands of local attorneys. Or, as Gerben concluded: “This rule essentially uses the collective power of every licensed US trademark attorney to ensure the health of the US trademark system.”