The Inventhelp Success Stories recently proposed changes which would 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 way of 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 also the rules regarding Representation of Others Before the usa Patent and Trademark Office to require applicants, registrants, or parties to some proceeding whose domicile or principal workplace is not really located within the usa (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to get represented by an attorney who may be a dynamic member in good standing from the bar from the highest court of any state in the U.S. (including the District of Columbia and then 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 are not subjected to invalidation for reasons like improper signatures and make use of 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 numerous licensed US attorneys that will carry on and aid in expanding protection in our client’s trade marks into america. No changes to those arrangements will likely be necessary and we remain available to facilitate US trade mark applications on the part of our local clients.
United States designations filed through the Madrid protocol will fall in the proposed new requirements. However, it is actually anticipated that the USPTO will review procedures for designations which proceed through to acceptance in the first instance so that a US Attorney do 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 Invention Service to answer Office Actions on the part of our local clients is not going to change.
A big change is set ahead 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 defence to groundless threats. Currently, a trade mark owner who commenced infringement proceedings against another party was exempt coming from a cross-claim of groundless or unjustified threats. However, this will soon not be possible.
This amendment towards the Trade Marks Act brings consistency throughout 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 enable this defence. We expect that the removing of this area of the Trade Marks Act will permit the “unjustified threats” provisions in the Trade Marks Act to be interpreted similar to the How To Pitch An Invention To A Company. Thus, we know chances are that in case infringement proceedings are brought against a party who vafnjl ultimately found not to be infringing or the trade mark can be found to get invalid, the trade mark owner is going to be deemed to possess made unjustified or groundless threats.
Furthermore, a new provision will likely be added to the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording a legal court the ability to award additional damages in the event that an individual is deemed to possess made unjustified threats of proceedings for infringement. A legal court will consider a number of factors, such as the conduct from the trade mark owner after making the threat, any benefit derived by the trade mark owner from your threat and the flagrancy of the threat, in deciding whether additional damages are to be awarded against the trade mark owner.