The Inventhelp Pittsburgh Headquarters recently proposed changes which will 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 means of 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 United States Patent and Trademark Office (USPTO or Office) proposes to amend the Rules of Practice in Trademark Cases and the rules regarding Representation of Others Before America Patent and Trademark Office to require applicants, registrants, or parties to your proceeding whose domicile or principal workplace will not be located within the USA or its territories (hereafter foreign applicants, registrants, or parties) to be represented by an attorney who is an energetic member in good standing of the bar from the highest court of a state in the U.S. (such as the District of Columbia as well as any Commonwealth or territory in the U.S.). A requirement that such foreign applicants, registrants, or parties be represented by a qualified U.S. attorney will instill greater confidence within the public that U.S. registrations that issue to foreign applicants usually are not subject to invalidation for reasons such as improper signatures and make use of claims and encourage 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 still aid in expanding protection of our own client’s trade marks into America . No changes to these arrangements will be necessary so we remain accessible to facilitate US trade mark applications on the part of our local clients.
United States designations filed through the Madrid protocol will fall inside the proposed new requirements. However, it really is anticipated the USPTO will review procedures for designations which proceed right through to acceptance on 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 qualified US Attorneys. This modification will affect self-filers into America – our current practice of engaging Inventhelp Company Headquarters to respond to Office Actions for our local clients will never change.
A huge change is placed in the future into force for Australian trade mark owners, who, from 25 February 2019, will not 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 will soon no longer be possible.
This amendment for the Trade Marks Act will bring consistency across the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which up to now, was the sole act to permit this defense. We expect that the removing of this section of the Trade Marks Act will permit the “unjustified threats” provisions of the Trade Marks Act to get interpreted just like the Inventhelp Commercial. Thus, we know chances are that in the event infringement proceedings are brought against a party who vafnjl ultimately found never to be infringing or perhaps the trade mark is located to get invalid, the trade mark owner is going to be deemed to have made unjustified or groundless threats.
Additionally, a whole new provision will likely be included in the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording a legal court the power to award additional damages when one is deemed to possess made unjustified threats of proceedings for infringement. The court will consider numerous factors, including the conduct of the trade mark owner after making the threat, any benefit derived from the trade mark owner from your threat and also the flagrancy in the threat, in deciding whether additional damages should be awarded against the trade mark owner.