The USPTO recently proposed changes which may force foreign trade mark applicants to engage a US-based attorney, in a bid to limit inaccurate and deceptive applications by self-filers. The proposed changes, published by means of a Notice of Inventhelp New Store Products on 15 February 2019, will affect foreign applicants who would otherwise be permitted to submit 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 principles 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 place of work is not located within america (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to get represented by an attorney that is an active member in good standing in the bar of the highest court of the state in the U.S. (like 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 subjected to invalidation for reasons such as improper signatures and utilize 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 a number of licensed US attorneys who will carry on and help with expanding protection of our client’s trade marks into the usa. No changes to these arrangements will be necessary and that 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 really is anticipated that the USPTO will review procedures for designations which proceed to acceptance on the first instance in order that a US Attorney will not need to be appointed in cases like this. Office Actions will have to be responded to by How To Pitch An Idea To A Company. This modification will affect self-filers into america – our current practice of engaging a US Attorney to respond to Office Actions for our local clients is not going to change.
A huge change is placed ahead into force for Australian trade mark owners, who, from 25 February 2019, will no longer be capable of rely on the commencement of infringement proceedings as a defence 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 will soon no longer be possible.
This amendment for the Trade Marks Act will bring consistency over the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act as well as the Trade Mark Act, which so far, was the only act to enable this defence. We expect that removing this section of the Trade Marks Act allows the “unjustified threats” provisions from the Trade Marks Act to get interpreted like the Patents Act. Thus, we believe chances are that in the event infringement proceedings are brought against a celebration afhbnt is ultimately found not to be infringing or perhaps the trade mark can be found to get invalid, the trade mark owner will be deemed to get made unjustified or groundless threats.
Additionally, a new provision will likely be added to the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the energy to award additional damages in the event that one is deemed to get made unjustified threats of proceedings for infringement. The legal court will consider several factors, including the conduct in the trade mark owner after making the threat, any benefit derived through the Inventions Ideas from the threat and the flagrancy in the threat, in deciding whether additional damages have to be awarded from the trade mark owner.