The United States Patent and Trademark Office (USPTO) has proposed new regulations which would require a business or individual to use an American attorney when filing a trademark application at the USPTO. This has the potential to affect approximately 50,000 foreign applications that file applications without an attorney each year.
The USPTO is primarily concerned with fraudulent submissions made by foreign entities in the past
The most common type of fraudulent submission made to the USPTO is where a non-rightsholder purports to own certain rights. Some variety of this scam has been going on for a while as this blog has previously noted. The USPTO says as much:
The requirement for representation by a qualified U.S. attorney is being proposed in response to the increasing problem of foreign trademark applicants who purportedly are pro se (i.e., one who does not retain a lawyer and appears for himself or herself) and who are filing inaccurate and possibly fraudulent submissions that violate the Trademark Act (Act) and/or the USPTO’s ruleshttps://www.federalregister.gov/d/2019-02154/p-16
Additionally, in order to register a trademark the mark has to be shown on a “specimen” as being used in commerce. This is done in a document known as a “statement of use” which is filed under penalty of perjury. The USPTO is concerned that foreign filers are creating fake specimens to “prove” marks is in use when these marks are not, in fact, in use.
The USPTO really doesn’t have tools to combat these bad actors. While lying to the USPTO is a crime in the United States, it is not easily enforceable in other countries. There is no real way to prevent bad actors from changing their IP addresses and filing more fraudulent applications with fake statements of use. Individual states in the United States have laws that prevent the “Unauthorized Practice of Law”, but those laws are not readily enforceable overseas. Pretty much the only away to hold someone accountable for the acts of bad actors is to have someone located in the United States… like an American Attorney.
Applications filed under the Madrid Protocol may continue to be filed by anyone
A Madrid Protocol Application is a trademark application that designates the International Bureau in Geneva, Switzerland to examine the mark for register-ability. The mark is then sent to all designated countries to ensure the application complies with local requirements as well. The USPTO is not requiring the International Bureau to change its information technology system to require an input of every national attorney who the applicant intends to use.
Currently, when a person wants to file a trademark in a number of countries at once, the application simply designates those countries and one of two things happens when the application arrives: 1) the application is approved without amendment (this is known as an “origin registration”) or 2) there is an office action that requires some legal work to be approved. The USPTO tells us 2.4% of applications need no further amendment upon entering the United States. The USPTO estimates that an origin registration costs $600 and that an amendment to the application responding to an office action costs $1,000.
Right now, there is no requirement to designate an American attorney by the foreign entity at all. The USPTO wants to change that to requiring a designation either at the time of the origin registration or at the time an amendment is needed.