NYIPLA Submits Comments to the U.S. Patent and Trademark Office with Respect to its Proposed Rule Requiring U.S. Attorneys for Foreign Trademark Applicants and Registrants
The New York Intellectual Property Law Association (NYIPLA) has submitted comments in response to the U.S. Patent and Trademark Office’s (USPTO’s) Notice of Proposed Rulemaking (“NPRM”) for a possible Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants. 84 Fed. Reg., No. 32, pp. 4393-4404 (Docket No. PTO-T-2018-0021). The USPTO is proposing this requirement in order to curtail the increasingly frequent problem of foreign trademark applicants, who are purportedly acting pro se, filing inaccurate and possibly fraudulent submissions, most often consisting of bogus claims and specimens of use of applied-for marks in U.S. commerce.
In its comments, the NYIPLA agrees with the proposal because requiring applications to be filed through U.S. practitioners who are subject to disciplinary jurisdiction at both the federal and state levels should have the intended effect, i.e. making it less likely that foreign based filings will contain inaccurate statements or be signed or averred to by unauthorized parties. The NYIPLA’s comments also support one of the USPTO’s two stated options for enforcement, whereby the USPTO would issue an initial Office Action for a non-complying application which makes the requirement but defers full examination until U.S. counsel is appointed (in order to conserve USPTO resources).
In the NPRM, the USPTO also suggested the possibility of a limited exception to the new rule for certain trademark applications filed under the Madrid Protocol, i.e. those that are otherwise in order for approval when filed. On this point, the NYIPLA’s comments suggest that Madrid applications be treated like other applications under the new rule, i.e. they should receive an Office Action stating that U.S. counsel must be appointed before the USPTO proceeds to full review and reminding the applicant that a bona fide intention to use the mark is required even for applications based on foreign filings. This NYIPLA believes that the early involvement with U.S. counsel in connection with Madrid applications would be a reasonable measure to help ensure accurate compliance with the requirement, applicable to all Madrid applications seeking extension into the United States, of a bona fide intention to use the mark in US commerce in connection with the goods or services identified in the application. The failure of many applicants, including Madrid-based filers, to accurately comply with this requirement, and to instead file applications including voluminous lists of goods or services in multiple classes that are not fully supported by such a bona fide intention, has proven to be an additional cause of inaccuracy in the U.S. Trademark Register, posing related burdens and disadvantages to legitimate filers.