April 12, 2019

US PTO Proposed Rule for Foreign Trademark Applicants and Registrants

The U.S. Patent and Trademark Office (the “PTO”) has proposed new rules that would require foreign trademark applicants and registrants to engage U.S. attorneys to prosecute applications, handle post-registration matters, and represent them before the Trademark Trial and Appeal Board. You can review the formal notice of proposed rulemaking here. You can also view an overview and collection of comments made in response to the rule here.

In the introduction to the proposed rule, the PTO explains what motivated it to propose the rule. In the past several years, the PTO has observed numerous instances of the unauthorized practice of law in connection with foreign applicants before the PTO. This means both that the applicants and registrants are receiving bad advice and that there are legitimate questions raised about the integrity of the applications and registrations on the register.

To combat these issues, the PTO proposes to require all applicants and registrants as well as parties with matters before the TTAB who are domiciled outside the U.S. to engage an attorney licensed to practice law in the U.S. to handle matters before the PTO and the TTAB for them. This means that U.S. attorneys may have to present evidence they are licensed to practice law in the U.S. when representing clients before the PTO and the TTAB.

The PTO has collected comments on the proposed rule, including comments from trade associations representing brand owners and bar associations for intellectual property attorneys. These groups generally support the proposed rule and commented on some of the alternatives the PTO considered. The biggest difference of opinion appeared to be with when and how the requirement for representation by US counsel is raised. For example, INTA prefers that the PTO require foreign applicants to obtain U.S. counsel as part of the initial office action raising any other issues with the application and allowing the applicant six months to respond. The IPO similarly supported this rule, but suggested that if the PTO chooses to defer examination, that it allow a shortened timeframe for applicants to obtain U.S. counsel (rather than the six-month period applicants typically have to respond to office actions). AIPLA and the ABA, on the other hand, favored deferring full examination until a U.S. attorney was appointed. Some organizations also support the PTO’s potential waiver of the rule for Madrid applications where no substantive issues or formalities need be raised, especially since there is currently no mechanism for appointing U.S. counsel at the outset of a Madrid application.

Those who would be thwarted by the rule wasted no time in trying to overcome this potential obstacle. Soon after the PTO made this announcement, many trademark attorneys in the U.S. received an email like the one I received below:

Of course, granting such request is ill-advised for numerous reasons, not least of which is that it could jeopardize the license of the U.S. attorney. The speed and boldness of this attempted work-around also illustrates the challenge the PTO faces in attempting to address this issue. If these individuals were willing to masquerade as licensed U.S. attorneys to avoid discontinuing their current practice, they are just as likely to find other means of circumventing the rule. For example, one could imagine them finding a way to use a U.S. address temporarily to appear that they are domiciled domestically. Some of the organizations providing comments on the rule also expressed concern that foreign applicants, registrants, and parties could misuse publicly-available information about U.S. attorneys to give the false impression that they are adequately represented. To address this concern, organizations such as INTA proposed that the PTO issue unique identifiers to U.S. attorneys and/or mask such identifying information when it is presented.

Now that the PTO has proposed the rule and received comments, we wait to see when/whether the PTO will issue the final rule and when it will go into effect. Hopefully these efforts will have the desired effect.