The Inventhelp Tv Commercials 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 file trade marks directly with the USPTO without engaging a licensed US attorney.
The NPR Summary reads: The Usa Patent and Trademark Office (USPTO or Office) proposes to amend the principles of Practice in Trademark Cases as well as the rules regarding Representation of Others Before the United States Patent and Trademark Office to require applicants, registrants, or parties to some proceeding whose domicile or principal place of business is not located within the USA or its territories (hereafter foreign applicants, registrants, or parties) to get represented by a lawyer that is an energetic member in good standing of the bar from the highest court of the state in the U.S. (including the District of Columbia as well as any Commonwealth or territory of the U.S.). A requirement that such foreign applicants, registrants, or parties be represented by a qualified U.S. attorney will instill greater confidence inside the public that U.S. registrations that issue to foreign applicants are not susceptible to invalidation for reasons like improper signatures and make use of claims and allow the USPTO to better 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 a number of licensed US attorneys that will carry on and aid in expanding protection in our client’s trade marks into the USA . No changes to those arrangements will likely be necessary and we remain accessible to facilitate US trade mark applications for our local clients.
United States designations filed through the Madrid protocol will fall inside the proposed new requirements. However, it really is anticipated that the USPTO will review procedures for designations which proceed to acceptance on the first instance in order that a US Attorney will not need to be appointed in this instance. Office Actions will have to be responded to by qualified US Attorneys. This transformation will affect self-filers into the United States – our current practice of engaging Inventhelp Store to respond to Office Actions on behalf of our local clients will never change.
A huge change is placed to come into force for Australian trade mark owners, who, from 25 February 2019, will not be in a position to rely on the commencement of infringement proceedings as a defense to groundless threats. Currently, a trade mark owner who commenced infringement proceedings against another party was exempt from the cross-claim of groundless or unjustified threats. However, this can soon not be possible.
This amendment to the Trade Marks Act will bring consistency throughout the Australian Patents Act, Designs Act, Plant Breeder’s Rights Act and the Trade Mark Act, which so far, was the only real act to permit this defense. We expect that the removal of this section of the Trade Marks Act will permit the “unjustified threats” provisions from the Trade Marks Act to get interpreted just like the How To Get A Patent On An Idea. Thus, we believe chances are that in the event infringement proceedings are brought against an event who vafnjl ultimately found never to be infringing or the trade mark can be found to get invalid, the trade mark owner will be deemed to get made unjustified or groundless threats.
Additionally, a brand new provision will likely be added to the Patents Act, Designs Act, Trade Marks Act and Plant Breeder’s Rights Act affording the legal court the power to award additional damages when a person is deemed to get made unjustified threats of proceedings for infringement. A legal court will consider numerous factors, such as the conduct from the trade mark owner after making the threat, any benefit derived from the trade mark owner from the threat as well as the flagrancy from the threat, in deciding whether additional damages are to be awarded from the trade mark owner.