By Stephen L. Grant, Senior Attorney, Standley Law Group LLP
As of 3 August 2019, the U.S. Trademark Office will have new rules in place regarding the representation of trademark applicants, registrants and parties in Trademark Office proceedings. If the applicant, registrant or party is not domiciled in the United States, an attorney licensed to practice in the United States must be appointed for representation. While U.S.-based parties are strongly encouraged to have an attorney licensed in the U.S. to represent them, it will not be required.
Between Fiscal Year 2015 (1 October 2014 to 30 September 2015) and Fiscal Year 2017 (1 October 2017 to 30 September 2017), total annual trademark applications in the U.S. Trademark Office increased by 64,336 applications. This is a 17% increase in annual applications. By itself, this increase should not be a concern, and it speaks well for market conditions and the perceived value of the U.S. trademark registration system. The unexpected statistic is the rapid increase in non-U.S. applications. Almost 70% of the increase in annual filings were by non-U.S. applicants.
A second surprise is in the nature of the non-U.S. applications. Presently, an applicant for a U.S. trademark is not required to be represented by a U.S.-licensed attorney. Those who are not represented by a U.S.-licensed attorney are referred to as “pro se” applicants. In FY 2015, slightly more than 25% of all applicants were “pro se,” with no real difference between U.S. and non-U.S. applicants. By FY 2017, this had dramatically changed. The U.S. “pro se” applicants increased to slightly more than 28%, but the non-U.S. “pro se” applicants increased to 44% on all non-U.S. filings.
The increase in pro se filings is a concern to the U.S. Trademark Office. Many non-U.S. trademark systems rely entirely upon registration as a basis for trademark rights. The U.S. system can be more of a challenge to the uninitiated, as it is based on use in commerce, although registration is highly advantageous. This is reflected in U.S. Trademark Office data regarding Madrid Protocol applications, which indicates that more than 97% of Madrid applications seeking U.S. protection require an Office Action to place them in condition for publication. Considering that many Madrid Protocol applications are submitted by experienced non-U.S. practitioners, this statistic is very surprising.
Under the new rules, and as of the effective date, the U.S. Trademark Office will require all applicants who are not domiciled in the United States to be represented before the Trademark Office by an attorney licensed to practice law in the United States on any filings using the Trademark Office’s Trademark Electronic Application System (“TEAS”) or the Electronic System for Trademark Trial and Appeals (ESTTA). Paper submissions will be subject to the same rules. Submission that predate the effective date of the new rule and that are otherwise acceptable will be processed without requiring appointment of a U.S. attorney. However, all Office Action responses filed will require a U.S. attorney to be appointed.
The forms used by the World Intellectual Property Office (WIPO) are not structured presently to allow appointment of a licensed U.S. attorney. Also, there are very few (less than 3%, as noted above) Madrid applications that are ready to be published as filed. The current USPTO plan is to waive the requirement for a qualified U.S. practitioner prior to publication, at least until WIPO has an opportunity to update the filing forms.
The proposed rules may also require more information from the appointed U.S. attorney, including name, postal address, e-mail address and bar registration information. This would apply to all applications where a U.S. practitioner is appointed, including domestic applicants.
The requirement for an appointed U.S. attorney is not without consequence for the U.S. attorney. Trademark Office rules already impose a duty on the attorney to make a reasonable inquiry to prevent false, fictitious or fraudulent statements in documents filed with the Office and to sign all such documents.
Standley Law Group has extensive experience in representing both domestic and foreign trademark applicants and we would be happy to discuss your trademark issues with you.