Blog

USPTO to foreign trademark applicants: Heed this message

| Jul 11, 2019 | intellectual property

If you’re a foreign trademark applicant (say, a Chinese company seeking to register and protect a mark in the U.S. market), you’re either getting up to speed on relevant laws and processes or already know something about the status quo.

Forget everything you’ve learned.

Seriously. The U.S. Patent and Trademark Office wants non-U.S. domiciled parties seeking to apply for or register a trademark in the United States to rethink virtually everything related to the process. That goes for parties involved in certain proceedings before the Trademark Trial and Appeal Board as well.

What drives USPTO trademark concerns and the new mandate?

American regulators candidly concede the feeling that the USPTO is under a virtual siege by what a recent article terms “a growing surge of applications filed by foreign applicants.” That is coupled with the progressively growing challenges faced by the entity in simply keeping track of relevant filing information and its accuracy. The USPTO points especially to these enumerated concerns:

  • Applicants acting on their own (“pro se”), which is leading to legions of errors and misinformation
  • Applicants proceeding with foreign legal counsel providing incompetent representation
  • Applicants’ lack of knowledge concerning trademark use requirements following registration
  • Applicants’ representations that falsely state representation by American attorneys

Collectively, say authorities, those concerns and others linked with them are sufficiently material to compel significant changes. Regulators stress that a failure to quickly announce new processes and requirements could simply render trademark application and registration untenable. That outcome would obviously spawn profound and worldwide implications.

What will the USPTO shortly require of foreign applicants?

The bottom-line answer to that above header query can be summarized in a single word: plenty. In fact, the current law soon to be supplanted will essentially be gutted entirely and superseded by several notable changes, most notably these:

  • Elimination of election to proceed before the USPTO either pro se or through foreign legal counsel
  • Duty of retained American counsel to file good-standing information, including bar certification

In making those changes, regulators give a necessary nod to instances where a case is already pending with trademark authorities. The new procedures contain a “grandfather clause” allowing them to go forward.

The key date to note for what truly spells seismic changes in U.S. trademark law is August 3 of this year, a date that obviously looms imminently large. All stated change will take effect from that day.

The failure of a foreign mark applicant/registrant to duly heed the mandates can obviously yield dire consequences.

The aforementioned overview on the changes underscores that and offers a strong recommendation in light of new realities.

It stresses that, “Retaining U.S. trademark counsel must be given priority in current practice and strategy immediately.”