The Inventhelp Inventions Store 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 through a Notice of Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who would otherwise be permitted 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 principles 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 place of work will not be located within the United States or its territories (hereafter foreign applicants, registrants, or parties) to be represented by an attorney who is a dynamic member in good standing of the bar of the highest court of any state in the U.S. (like the District of Columbia and any Commonwealth or territory of 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 in the public that U.S. registrations that issue to foreign applicants usually are not susceptible to invalidation for reasons such as improper signatures and use claims and enable 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 numerous licensed US attorneys who will still assist with expanding protection of our client’s trade marks into America . No changes to those arrangements is going to be necessary and we remain available to facilitate US trade mark applications on behalf of our local clients.
United States designations filed by way of the Madrid protocol will fall inside the proposed new requirements. However, it is anticipated that this USPTO will review procedures for designations which proceed to acceptance at the first instance to ensure that a US Attorney need not be appointed in this instance. Office Actions will have to be responded to by qualified US Attorneys. This modification will affect self-filers into the United States – our current practice of engaging Inventhelp Office to answer Office Actions on behalf of our local clients is not going to change.
A large change is set ahead into force for Australian trade mark owners, who, from 25 February 2019, will not be capable of rely on the commencement of infringement proceedings as a defense to groundless threats. Currently, a trade mark owner who commenced infringement proceedings against another party was exempt from the cross-claim of groundless or unjustified threats. However, this will soon no longer be possible.
This amendment for the Trade Marks Act will take 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 only act to allow this defense. We expect that the removal of this portion of the Trade Marks Act will allow the “unjustified threats” provisions in the Trade Marks Act to become interpreted like the Inventhelp Number. Thus, we believe chances are that in the event that infringement proceedings are brought against a celebration who vafnjl ultimately found never to be infringing or the trade mark is located to be invalid, the trade mark owner is going to be deemed to have made unjustified or groundless threats.
In addition, a brand new provision will be added to the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the ability to award additional damages in case one is deemed to get 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 through the trade mark owner from the threat and the flagrancy from the threat, in deciding whether additional damages should be awarded from the trade mark owner.