Blog December 2, 2020
Legal Alert: New Rule Requires Foreign-Domiciled Trademark Applicants, Registrants, and Parties at TTAB to Be Represented by U.S. Attorney
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Effective August 3, 2019, the United States Patent and Trademark Office (USPTO) will require all foreign-domiciled trademark applicants, registrants, and parties to proceedings at the Trademark Trial and Appeal Board (TTAB) to be represented by a U.S. attorney. The Trademark Office is taking this rather extraordinary step mainly in response to the increasing problem of foreign applicants who file inaccurate and possibly fraudulent submissions. Unlike in most countries, the U.S. trademark register is supposed to largely reflect marks that are in actual use in commerce. The problem of overbroad registrations makes clearance of new marks more difficult and expensive and muddies the waters when parties are engaged in trademark disputes.
The problem arises in two main contexts. First, foreign trademark applicants relying on ownership of a foreign registration often fail to appreciate that their U.S. applications should be limited to the goods and services for which they have a bona-fide intent to use the mark in U.S. commerce. Thus, foreign applicants sometimes wrongfully assume that they are entitled to a U.S. registration that is just as broad — or overbroad — as their foreign registrations. Second, nefarious applicants may file doctored samples of use of a mark in an effort to fool the Trademark Office and the public into thinking that a mark is in use in U.S. commerce when it is not. The requirement that trademark applicants, registrants, and parties to proceedings at the TTAB be represented by a U.S. attorney should help educate foreign applicants as to the U.S. legal standards for what a mark may legitimately be registered for, and should also help reduce the number of outright fraudulent filings.
For filings under the Madrid Protocol seeking to extend protection of an international registration to the United States, the rule will be waived until the Madrid system managed by the World Intellectual Property Organization (WIPO) is updated to allow for the designation of a U.S. attorney. If an office action issues initially refusing the application, the applicant will then need to be represented for its response, as is currently the rule.
As stated by the Trademark Office, in the past few years the scale of the problem of overbroad trademark registrations has become "massive." The new rule should help reverse that trend, but it will still be many years before the register is "cleansed" of existing overbroad registrations for which renewal filings may not be due for ten years. Nonetheless, the goal of the new rule is laudable and should help improve the integrity of the register of marks "in use" in U.S. commerce.
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.
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