The Inventhelp Reviews 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 by way of a Notice of Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who will 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 guidelines of Practice in Trademark Cases and also the rules regarding Representation of Others Before the United States Patent and Trademark Office to require applicants, registrants, or parties to a proceeding whose domicile or principal workplace will not be located within America or its territories (hereafter foreign applicants, registrants, or parties) to be represented by legal counsel who may be a dynamic member in good standing of the bar in the highest court of any state within the U.S. (like the District of Columbia as well as 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 inside the public that U.S. registrations that issue to foreign applicants are not subject to invalidation for reasons like improper signatures and use claims and allow the USPTO to better 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 can carry on and aid in expanding protection of our client’s trade marks into the United States . No changes to such arrangements is going to be necessary and 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 is actually anticipated that this USPTO will review procedures for designations which proceed through to acceptance in the first instance in order that a US Attorney will not need to be appointed in this situation. 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 Inventhelp Company Headquarters to respond to Office Actions on behalf of our local clients will not change.
A huge change is placed in the future into force for Australian trade mark owners, who, from 25 February 2019, will no longer be able to rely on the commencement of infringement proceedings as being a defense to groundless threats. Currently, a trade mark owner who commenced infringement proceedings against another party was exempt from a cross-claim of groundless or unjustified threats. However, this may soon no longer be possible.
This amendment towards the Trade Marks Act brings consistency over the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act and also the Trade Mark Act, which up to now, was the sole act to permit 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 be interpreted similar to the Inventhelp Inventor Service. Thus, we feel chances are that in case infringement proceedings are brought against a party who vafnjl ultimately found never to be infringing or even the trade mark is found to be invalid, the trade mark owner will likely be deemed to possess made unjustified or groundless threats.
Furthermore, a new provision will be included in the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the court the power to award additional damages when an individual is deemed to get made unjustified threats of proceedings for infringement. The court will consider a number of factors, including the conduct of the trade mark owner after making the threat, any benefit derived by the trade mark owner through the threat and the flagrancy of the threat, in deciding whether additional damages are to be awarded against the trade mark owner.