USPTO Proposes To Make Foreign Applicants Use U.S.-Licensed Attorneys

Do-It-Yourself U.S. trademark filings from anywhere in the world may no longer be the story by the end of 2019.  On February 15, 2019, the United States Patent and Trademark Office (USPTO) published a proposal to change federal trademark law. The USPTO is looking to require any trademark applicants, registrants, and parties who have a permanent legal residence or a principal place of business outside the U.S. to hire an attorney who is licensed to practice law in the U.S. to represent them at the USPTO.  Additionally, US-licensed attorneys representing clients before the USPTO would be required to confirm they are active members in good standing of their bar.

In its Notice of Proposed Rulemaking[1] (“Notice”), the USPTO identified two major consideration for this proposal: “Integrity of the U.S. Trademark Register” and “Enforce Compliance with U.S. Statutory and Regulatory Requirements”.  The number of foreign trademark applicants has been growing significantly in recent years.[2] The USPTO has been seeing “many instances of unauthorized practice of law (UPL) where foreign parties who are not authorized to represent trademark applicants are improperly representing foreign applicants before the USPTO.”

Among other things, the USPTO gives a specific example of “applications claiming use of a mark in commerce, but frequently support the use claim with mocked-up or digitally altered specimens that indicate the mark may not actually be in use. Many appear to be doing so on the advice, or with the assistance, of foreign individuals and entities who are not authorized to represent trademark applicants before the USPTO”.  Such UPL burdens the USPTO thereby reduces its effectiveness. It also increases the applicants’ risk of not responding to an office action or opposition properly, a rejection, poor maintenance, and insufficiency of their enforcement of trademark rights moving forward. In the long run, such problems could affect the value of any U.S. trademark registration. The Notice points out that the USPTO lacks mechanisms and sanctions against such parties for improper filings or violations of any USPTO order because disciplinary actions are not applicable to these parties in the first place. In fact, the USPTO has been publishing warnings about UPL on its website as well as notifying applicants when their representative has been “excluded” from representation before the USPTO.  However, the USPTO is not sure such efforts will reach the applicants’ attention.

The proposed approach is not a system without precedent. Similar requirements exist in Brazil, Chile, the People’s Republic of China, Israel, Japan, Jordan, Republic of Korea, Morocco, and South Africa, and the European Union’s Intellectual Property Office. The USPTO is already receiving comments from both sides as to how it would work in the U.S.  Some advocates believe that it will help reduce the number of fraudulent filings and lessen the chance applicants would have to deal with the “conflicting marks” which are not actually used in commence. Opponents, on the other hand, argue it would increase applicants’ costs, the U.S. may lose business opportunities, and it may be viewed as a discrimination in trade. For both sides, the window for public comments is open until March 18, 2019 and we anticipate a decision to be made in July or August of this year.

[1] Access the whole document of Notice of Proposed Rulemaking https://www.federalregister.gov/documents/2019/02/15/2019-02154/requirement-of-us-licensed-attorney-for-foreign-trademark-applicants-and-registrants

[2] The Notice shows in FY 2016, there were 16,853 more applications from foreign applicants than in FY 2015. Then FY 2017 had 27,696 more than FY 2016.