The USPTO 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 by way of a Notice of Proposed Rulemaking (NPR) on 15 February 2019, will affect foreign applicants who will otherwise be permitted to submit trade marks directly with the USPTO without engaging a certified 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 Inventhelp Caveman Commercial to require applicants, registrants, or parties to some proceeding whose domicile or principal place of work is not really located within america (U.S.) or its territories (hereafter foreign applicants, registrants, or parties) to be represented by a lawyer who is a dynamic member in good standing from the bar of the highest court of a state within the U.S. (like the District of Columbia and then any Commonwealth or territory from 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 utilize 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 that will carry on and help with expanding protection in our client’s trade marks into the usa. No changes to these arrangements will be necessary and we remain available to facilitate US trade mark applications for our local clients.

U . S . designations filed by way of the Madrid protocol will fall inside the proposed new requirements. However, it really is anticipated that this USPTO will review procedures for designations which proceed through to acceptance on the first instance so that a US Attorney do not need to be appointed in cases like this. Office Actions must be responded to by qualified US Attorneys. This transformation will affect self-filers into america – our current practice of engaging a US Attorney to answer Office Actions on the part of our local clients will not change.

A big change is set to come into force for Australian trade mark owners, who, from 25 February 2019, will no longer be capable of 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 from a cross-claim of groundless or unjustified threats. However, this can soon not be possible.

This amendment for the Trade Marks Act will take consistency over the Inventhelp Caveman, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which up to now, was the only real act to enable this defence. We expect that the removal of this section of the Trade Marks Act will allow the “unjustified threats” provisions of the Trade Marks Act to be interpreted similar to the Patents Act. Thus, we believe it is likely that in the event that infringement proceedings are brought against a party who fwhdpo ultimately found to not be infringing or even the trade mark can be found to get invalid, the trade mark owner will likely be deemed to have made unjustified or groundless threats.

Furthermore, a new provision is going to be included in the Inventhelp Product Development, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording a legal court the energy to award additional damages in the event that one is deemed to get made unjustified threats of proceedings for infringement. A legal court will consider several factors, like the conduct in 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 have to be awarded against the trade mark owner.

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