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A new rule has been announced by the United States Patent and Trademark Office (USPTO) requiring that any foreigner who applies for trademark registration or appears before a Trademark Trial and Appeal Board in the United States can only be represented by a lawyer who is licensed to practice in the United States. This rule has been announced for those parties whose principal place of business or permanent address is outside the United States. Further, the attorneys, who will be representing these foreign parties, are required to show that they are in good standing of their bar and are an active member as well. Let us discuss the reasoning for these new rules by the USPTO.
ACCURACY AND INTEGRITY OF THE TRADEMARK REGISTER
The foremost reason given by the USPTO for coming up with this new rule is the maintenance of accuracy and integrity of the trademark register. The office has claimed that a large number of foreign parties, not authorised to represent trademark applicants have been submitting inaccurate information. Such information is detrimental to the interests of both, the trademark owner and the user of the trademark register for verifying the uniqueness of his own trademark.
The office has said that when a person uses the trademark register, he might come across a trademark that has identified goods and services in its registration with which it has no connection to, in reality. This will lead to unnecessary financial burdens upon the user of the register who might have to investigate the actual use of the trademark, initiate proceeding for the cancelling the trademark or might have to choose a different mark all together in order to avoid conflicts that were not there in the first place. The new rule will protect such users of the trademark register. On the other hand, the owner of the trademark will be protected against cancellation of his trademark which he may face quite easily if he makes fraudulent or incorrect claims. Hence, the USPTO claims that the new rules will benefit both, the user and the owner, by reducing costs and increasing the reliability of the trademark register.
The USPTO has stated that its current mechanisms for investigation and enforcement against fraudulent trademark filing are very limited and ineffective. Although the current law under 35 U.S.C. 3(b)(2)(A) allows the Commissioner for Trademarks to issue show cause notice to applicants or their representatives in case of a violation of the law, the language barrier, as well as the foreign location of the applicant, has made the notice very unsuccessful.
Making it mandatory for the foreign applicant to be represented by a US licensed attorney will help in solving this issue. Since the Office of Enrolment and Discipline (OED), on finding that a practitioner has been involved in unwanted practice of law, can exclude or suspend them from practice before office, censure them or probate them, such instances are likely to reduce after the introduction of these new rules. The OED can further inform the state bar that the practitioner is registered to take appropriate action in the face of the malpractice that they have involved themselves in.
RULE OF RECIPROCITY
The new rules have allowed foreign attorneys, who are in good standing before the trademark office of the country to which they belong, to represent clients of their countries in the trademark proceedings in the United States as long as there exists an official understanding between USPTO and the trademark office of that country, whereby substantially similar privileges are being extended by the trademark office of that country to US licensed attorneys as well.
At the moment, only attorneys from Canada have been extended this privilege; however it is limited to trademark attorneys alone. Canadian Patent agents have also .been excluded from representing Canadian parties in trademark matters.
A WAY TO CURB TRADEMARK REGISTRATION BY CHINESE CITIZENS
This move has been seen by many as the strategy by which the USPTO is aiming to reduce the number of trademarks filed by Chinese citizens in expectations of the Chinese municipal government subsidies. It costs approximately $325 for a Chinese citizen to file a US trademark application. The Chinese municipal government, in return for every successful registration, pays its citizens $790. Hence, there was an increasing number of trademark application filed by the Chinese residents who were only interested in the monetary benefit and not in the rights that ensues a successful registration. This new rule, by involving the cost of hiring a US licensed attorney, will raise the cost involved in filing a registration application and hence will deter such unscrupulous applicants in the future.
It is still to be seen how the trademark offices of the other countries will react to these new rules and whether or not, will there be agreements reached to extend reciprocity and what will be the impact of such reciprocity on the domestic circuits of such countries.
Author: Varun Sharma, LL.B., 3rd Year, Campus Law Centre, University of Delhi, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at