US Trademark Law Update: Foreign Applicants

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Effective August 3, 2019, all foreign-domiciled companies and individuals who wish to apply for a US trademark, must use an attorney who is licensed in the US.

From the outset, we should recognize that new companies, brands, and ideas coming into the marketplace is almost always great for consumers. With those new companies, brands, and ideas, comes new trademarks and intellectual property. Over the last few years, globalization and international trade have led to a bevy of new trademark filings in the U.S. The issue, however, in the world of intellectual property protection is; what happens when the “new” companies, brands, and ideas, are actually fraudulent, or, misleading consumers and/or the government?

Andrei Iancu, the Director of the USPTO, decided from the start of his tenure, that he was going to implement aggressive, new, and bold ideas to combat the surge of fraudulent and inaccurate trademark filings; the latest of which, is the topic of this blog post. As the subtitle states, the USPTO has issued a new rule, effective August 3rd, which will require all foreign-domiciled trademark applicants to use a U.S. licensed attorney throughout the trademark process. This includes having your trademark application filed by a U.S. attorney and having the U.S. attorney respond to office actions.

So the question then becomes; why is the USPTO creating this rule?

The USPTO states the new rule aims to: (1) Increase USPTO customer compliance with U.S. trademark law and USPTO regulations; (2) Improve the accuracy of trademark submissions to the USPTO; and (3) Safeguard the integrity of the U.S. trademark register. In plain English, they want U.S. lawyers who are: (a) within their jurisdiction (for discipline or otherwise), (b) knowledgeable about U.S. trademark law, and (c) able to properly file U.S. trademarks.

For perspective, let’s look at some numbers:

  • At the end of FY2016, there were ~389,000 trademark applications filed with the USPTO. By the end of FY2018, there were ~458,103 trademark applications filed with the USPTO.
  • Chinese applicants accounted for 11% of the trademark applications filed in 2018. The next closest country was Canada at 2%. Only one State, California, had more trademark applications in 2017 than China.
  • By the end of the FY2014, Chinese individuals or companies filed approximately 5,161 trademark applications. By the end of the FY2018 fiscal year, Chinese individuals or companies filed approximately 54,064 applications. That’s an increase of more than 1000% in 4 years.
  •   80% of Chinese trademark filings were “pro se” (meaning without an attorney). The next closest country was Germany at 51%.

Prior to this ruling, a foreign individual or company was able to file a trademark application through the USPTO on their own. In a globalized economy with hundreds of languages and different laws, the prior approach has at least two inherent flaws:

  1. Each country has different trademark laws. The USA and Israel are among the countries that ascribe to a “first to use” trademark law approach, whereas, China and Germany (among others) recognize “first to file”. That dichotomy alone is enough to cause issues, as one could foresee that Chinese or German individuals who are “pro se” would file a trademark without any intention of using the mark properly under U.S. law or within the allotted time frame under an “intent to use” (1(b)) trademark application.
  2. Due to the sheer amount of applications, the USPTO would lose efficiency in the overall application process, especially considering the amount of time it takes to review an application. A bullet-proof trademark application with no issues could receive a thumbs up from the USPTO and go through the opposition period unphased, in roughly 6.5 months. Add the time it takes to receive the actual registration certificate, and you’re looking at close to 9 months. A fraudulent or incorrect application could take longer, and thus, affect or delay properly filed applications.

So the last question is; what happens now? 

If you’re a foreign-domiciled applicant who has already submitted an application to the USPTO, and along the way, there are no issues or office actions issued, you can go along the process without a U.S. attorney. However, if you wish to file a new application or your existing application receives an office action, you need to find a U.S. licensed attorney to file your application or a response to the office action.

About the Author
Working with startups and small businesses in the U.S., Israel, and abroad. Adam assumes the role of a Trusted Advisor for his clients; breaking down the "typical lawyer" barriers. Adam's past experience includes being In-house Counsel for various technology companies in New York and New Jersey.
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