The USPTO recently suggested changes which may force foreign trade mark applicants to engage a US-based attorney, in a bid to limit inaccurate and fraudulent applications by self-filers. The proposed changes, published through a Notice of Inventhelp New Products on 15 February 2019, will affect foreign applicants who would otherwise be permitted to file trade marks directly with the USPTO without engaging a licensed US attorney.
The NPR Summary reads: America Patent and Trademark Office (USPTO or Office) proposes to amend the principles of Practice in Trademark Cases and also the rules regarding Representation of Others Before america Patent and Trademark Office to require applicants, registrants, or parties to some proceeding whose domicile or principal place of business is not really located within the United States (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to become represented by a lawyer who may be an energetic member in good standing in the bar in the highest court of a state in the U.S. (including the District of Columbia and then any Commonwealth or territory from the U.S.). A requirement that such foreign applicants, registrants, or parties be represented by way of a qualified U.S. attorney will instill greater confidence within the public that U.S. registrations that issue to foreign applicants are not susceptible to invalidation for reasons such as improper signatures and utilize claims and allow the USPTO to more effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters.
At Michael Buck IP, we already work closely with several licensed US attorneys who will continue to aid in expanding protection in our client’s trade marks into the usa. No changes to such arrangements will be necessary so we remain available to facilitate US trade mark applications on behalf of our local clients.
United States Of America designations filed by way of the Madrid protocol will fall in the proposed new requirements. However, it really is anticipated that the USPTO will review procedures for designations which proceed to acceptance at the first instance to ensure that a US Attorney will not need to be appointed in this situation. Office Actions will need to be responded to by Inventhelp Success Stories. This modification will affect self-filers into the United States – our current practice of engaging a US Attorney to answer Office Actions on the part of our local clients will never change.
A large change is set to come into force for Australian trade mark owners, who, from 25 February 2019, will not be capable of rely on the commencement of infringement proceedings being a defence to groundless threats. Currently, a trade mark owner who commenced infringement proceedings against another party was exempt coming from a cross-claim of groundless or unjustified threats. However, this may soon no longer be possible.
This amendment for the Trade Marks Act will take consistency throughout the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act as well as the Trade Mark Act, which up to now, was the sole act to allow this defence. We expect that the removal of this portion of the Trade Marks Act will permit the “unjustified threats” provisions from the Trade Marks Act to be interpreted just like the Patents Act. Thus, we know it is likely that in case infringement proceedings are brought against a party afhbnt is ultimately found never to be infringing or even the trade mark can be found to be invalid, the trade mark owner will be deemed to get made unjustified or groundless threats.
Additionally, a brand new provision will be put into the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording a legal court the power to award additional damages in the event that a person is deemed to have made unjustified threats of proceedings for infringement. A legal court will consider several factors, such as the conduct from the trade mark owner after making the threat, any benefit derived by the Inventhelp Caveman Commercials from your threat and also the flagrancy in the threat, in deciding whether additional damages are to be awarded against the trade mark owner.