24 Jul
2018

The USPTO should require foreign applicants to engage US counsel: guest op-ed

  • USPTO considers requiring non-US trademark applicants to hire US counsel
  • The move is part of ongoing efforts to fight fraud on the US register
  • Industry expert backs plan, says fraudulent filings devalue registration

On World Trademark Review, we have covered at length the USPTO’s efforts to combat improper specimens on trademark applications. It has emerged that the agency is currently considering a policy change to require applicants from outside of the United States to hire US counsel (or an authorised practitioner) to prosecute their applications (the requirement would not extend to applications filed pro se pursuant to the Madrid Protocol). In this guest policy op-ed, Eric Perrott, a trademark and copyright attorney with Gerben Law Firm in Washington DC, argues that such a move would help maintain the integrity of the US trademark register and the ultimate value of a US mark.

Guest analysis

Officials in the United States Patent and Trademark Office are reviewing a possible policy change to the US trademark registration system, namely that “trademark applicants from outside of the United States would be required to hire US counsel (or an authorized practitioner) to prosecute their trademark applications”.

By doing so, we would be joining many of our allies in requiring local counsel who can provide advice on US trademark law and understand the solemnity and importance of accurate, truthful representations to the USPTO. This requirement would also help slow the influx of fraudulent trademark applications being submitted by pro se foreign applicants that are actively endangering the integrity of the US registration process by submitting doctored specimens with no intention to use the mark in the US Inadequate representation often leads to botched trademark applications, which hurts trademark owners and applicants and increases the burden on the USPTO examining corps to identify and try to help remedy these issues. To the extent fraudulent applications are being filed, the intentional submission of fraudulent trademark applications hurts the integrity of the Federal Register, as well as increases the cost of registering a trademark and the risk of developing a new brand in the US.

As a trademark attorney that has seen these issues first-hand while prosecuting thousands of trademark applications for clients, I support this policy change and hope the USPTO fast-tracks the review and implementation of this policy.

The seemingly “simple” act of registering a trademark requires legal analysis in dozens of different ways. From the filing basis to ownership issues to proof of use - every step of the prosecution process has the ability to drastically affect the application and, more importantly, the resulting registration. Despite what many ‘$99 trademark filing specials’ online would like trademark owners to believe, each filing has its own unique challenges; and failure to understand and appreciate those challenges can be catastrophic for a trademark owner in the long term.

Hypothetical #1

Pro se applicant, Company A filed an ‘intent to use’ application on January 1 for its distinctive trademark for cell phone cases intending to launch within the year. On February 1 of the same year, Company B begins selling cell phone cases under the same name and files its own trademark application.

Company A’s application is approved for registration but, misunderstanding the USPTO’s proof of use requirement, submits pre-sale marketing documents for its cell phone case as its “proof of use” before any sales took place. Company A’s application is likely void and is not something that the applicant can correct with a simple amendment. Company A likely has no choice but to re-file its application and lose its priority date. And worse, Company B now has a claim of priority over Company A and can likely enforce its rights against Company A. Priority is one of the fundamental elements proving trademark infringement and through its misunderstanding of the law, Company A would lose its early priority date and potentially be the junior user of a trademark.

Inadequate knowledge of the ins-and-outs of the US trademark registration system can easily become fatal to an application and, in turn, can severely disrupt a company’s business. But, even when a trademark application successfully matures to a registration, there are a host of errors that may only come up when the registrant attempts to enforce its trademark rights against a potential infringer. This includes challenges for non-use as of the application date, lack of bona fide intent to use, ownership issues, and issues with the scope of goods and services.

Trademark law varies significantly from country to country, and it is not surprising that many international applicants (and applicants, in general) filing pro se lack the knowledge and sophistication to be able to navigate the US trademark registration system. In fact, because trademark prosecution inherently involves ‘legal advice’, the United States does not allow foreign attorneys to represent clients before the USPTO (except for registered Canadian agents.)

Yet foreign pro se applicants are still permitted to file themselves and often make common mistakes, such as filing applicants with overly-broad ‘laundry list’ identifications of disparate goods and services that the applicant cannot realistically have an intention to sell in the US These registrations will often issue, as they meet the bare minimum required by the USPTO for registration, but are subject to challenge.

The end result is not only the increased burden on the USPTO examining attorney to review and provide analysis of these marks that well-exceed the $275 per class application fee, but also an increased burden on businesses developing and seek registrations for their own marks. If, in the course of its due diligence, a business finds a potential conflict in a questionable registration, it will need to spend thousands of dollars analyzing the risk and filing an inter partes proceeding to challenge the registration. For a business trying to develop a new brand, it may just decide to spend that time and money on a developing a different trademark instead. These issues increase the risks of developing and expanding brands, while also increasing the costs.

In adopting a policy requiring foreign applicants to file using US counsel, the US would join many other countries around the world who already have this policy. In Japan, Article 8 of the Patent Act states that persons who don't reside or who are not domiciled in Japan cannot conduct any procedures directly with the JPO and must appoint a representative in Japan. In the European Union, a foreign applicant may represent itself when filing a trademark application but once the EUTM application is filed, foreign applicants must appoint a representative before or after receiving a deficiency notice regarding the application. Many other countries require a local agent or local attorney, as well as a domestic service address. The United States, it would seem, is the exception to these widely used practices by other countries.

One of the biggest fears is that this will be a deterrent to legitimate trademark applicants from foreign companies who are entering the US market to build their legitimate brands. Foreign trademark owners developing successful brands in the US is essential for a healthy, global economy and the recommendation to limit who can file a trademark application is not meant to be a protectionist reaction to the increasingly global marketplace. Admittedly, this requirement may exclude legitimate brand owners from a low-cost way of registering their trademarks, but the benefits of effective trademark counsel will, in my opinion, outweigh the burden of requiring said counsel. In fact, many successful foreign brand owners know the importance and value of a United States trademark and, as a result, choose to file with local counsel anyways because of the complexity and the stakes involved.

Further, if the USPTO Federal Register’s integrity is compromised by fraudulent or otherwise improper filings, I believe it will have the effect of reducing the value and importance of a trademark registration to both foreign and domestic trademark owners.

To maintain the integrity of the US trademark register and the value of a US trademark, I support the USPTO’s proposal to require foreign applicants to use licensed US counsel when filing use-based applications with the USPTO.

Trevor Little

Author | Editor

[email protected]

Trevor Little