The Inventhelp Store Products recently proposed changes which would 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 Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who would otherwise be allowed to file trade marks directly with the USPTO without engaging a licensed US attorney.
The NPR Summary reads: The Usa Patent and Trademark Office (USPTO or Office) proposes to amend the Rules of Practice in Trademark Cases and also the rules regarding Representation of Others Before the USA Patent and Trademark Office to require applicants, registrants, or parties to some proceeding whose domicile or principal workplace is not located within America or its territories (hereafter foreign applicants, registrants, or parties) to get represented by an attorney who may be an active member in good standing in the bar from the highest court of a state within the U.S. (such as the District of Columbia and then any Commonwealth or territory of 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 inside the public that U.S. registrations that issue to foreign applicants usually are not susceptible to invalidation for reasons such as improper signatures and make use of claims and encourage the USPTO to more efficiently 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 that will carry on and help with expanding protection of our own client’s trade marks into the United States . No changes to those arrangements is going to be necessary so we remain available to facilitate US trade mark applications on the part of our local clients.
United States designations filed by way of the Madrid protocol will fall in the proposed new requirements. However, it is anticipated the USPTO will review procedures for designations which proceed to acceptance on the first instance to ensure that a US Attorney need not be appointed in this instance. Office Actions will have to be responded to by qualified US Attorneys. This change will affect self-filers into the United States – our current practice of engaging Patent Invention to respond to Office Actions for our local clients is not going to change.
A big change is set in the future into force for Australian trade mark owners, who, from 25 February 2019, will not be in a position to rely on the commencement of infringement proceedings being a defense to groundless threats. Currently, a trade mark owner who commenced infringement proceedings against another party was exempt from the cross-claim of groundless or unjustified threats. However, this will soon not be possible.
This amendment towards the Trade Marks Act will take consistency throughout the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which until now, was the sole act to allow this defense. We expect that the removal of this area of the Trade Marks Act allows the “unjustified threats” provisions in the Trade Marks Act to become interpreted similar to the How To Invent A Product. Thus, we feel chances are that in case infringement proceedings are brought against a celebration who vafnjl ultimately found not to be infringing or even the trade mark can be found to get invalid, the trade mark owner will be deemed to have made unjustified or groundless threats.
Furthermore, a whole new provision will likely be put into the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the court the power to award additional damages when a person is deemed to possess made unjustified threats of proceedings for infringement. A legal court will consider several factors, like the conduct in the trade mark owner after making the threat, any benefit derived from the trade mark owner from the threat and the flagrancy of the threat, in deciding whether additional damages should be awarded from the trade mark owner.