On July 2, 2019, the United States Patent and Trademark Office (USPTO) officially announced a new rule requiring all foreign-domiciled trademark applicants and registrants to be represented by a United States trademark attorney in good standing. The rule extends to any registrants and parties to Trademark Trial and Appeal Board proceedings, as well, whose permanent places of business are outside of the United States. The USPTO notes that, in order to be qualified to file trademark documents for foreign applicants, an attorney must be a member in good standing of the bar of the highest court of a U.S. state. This new rule aims to ensure that the USPTO can effectively enforce foreign applicant compliance with U.S. trademark requirements and to help efforts to improve the accuracy of the U.S. Trademark Register.
The rule’s efforts to guarantee accuracy and foreign applicant compliance was spurred by a recent spike in pro se filings—patent/trademark applications filed without the assistance of a registered attorney—from foreign applicants. From fiscal years 2015 to 2017 the percentage of foreign filings in the U.S. rose from 19% to 26% of total patent and trademark applications, according to the Federal Register. Statistics also show significant growth in the number of pro se applicants, compared to the steady number of filings from U.S. pro se applicants. The USPTO predicts that the number of foreign filings will continue to rise, based on the relative strength of the U.S. economy.
Foreign filings in general do not represent a threat to the USPTO or its trademark applicants and registrants. However, the rule will protect against foreign applicants who misuse the system—this includes the fact that the Chinese government apparently has been providing subsidies to encourage Chinese citizens to obtain U.S. trademark registrations, without any sincere intent to use of the trademark rights—contrary to US law. It would be reasonable to speculate that the new rule is at least somewhat directed at reducing applications from these applicants, both by increasing the cost of filing an application and ensuring the applicant’s counsel has a complete understanding of USPTO rules and regulations.
The added requirement that foreign applicants must be represented by a qualified U.S. attorney in good standing is aimed not just at weeding out fraudulent or poorly prepared applications, but also to instill confidence in the U.S. public and the foreign applicants that applications are valid. Applications will be subject to invalidation for improper signatures and use claims, so registered marks will be ensured protection and validity. USPTO Director, Andrei Iancu, notes “Businesses rely on the U.S. trademark register to make important legal decisions about their brands. In order to maintain the accuracy and integrity of the register, for the benefit of all its users, the USPTO must have the appropriate tools to enforce compliance by all applicants and registrants.” The Director sees the rules as a step towards eliminating fraudulent submissions from the registry.
The USPTO will not be the first to adopt this rule, as many other countries worldwide have had the requirement of local counsel for years. The rule is intended to improve the quality of submission in the USPTO registry, not to exclude or impede foreign applications submitted in good faith.
The new rule will go into effect on August 3, 2019.