Acquiring a trade mark in the USA may get more complicated for applicants from foreign countries.
How is the law changing?
Starting from 3rd August 2019, a new law will take effect in the USA, which will require all foreign trade mark applicants, registrants and parties to trade mark proceedings to be represented by an attorney with right to practice in the United States. The attorney representing applicants, registrants and parties to the trade mark proceedings must be “active” and entitled to practice law in any of the 50 states, the District of Columbia or in the territories of USA Commonwealth. This requirement will not affect anyone who is domiciled in the USA.
How will this affect me?
A USA trade mark application filed without adequate USA representation will have an objection raised by the United States Patent and Trademark Office (USPTO), and will be given a 6 month period in order to assign a representative to overcome the objection. If a representative is not appointed within the deadline, the trade mark application will be refused.
What about international filings?
As for international filings made through the Madrid system designating the USA, currently there is no way of indicating a representative on the application form. However, the international applications will be subject to the same representation requirement in the future. Therefore, whilst filing a USA application via Madrid system may seem cost efficient, an objection is likely to be raised in relation to legal representation and an attorney will need to be recorded.
The logic behind the new requirement?
According to the US trade mark office, in 2017 the number of foreign trade mark applications made up approximately 26% of the total number of applications filed and continues to grow. According to the USPTO, the new procedural requirement should help to reduce the number of incorrect and/or “bad faith” applications and issues around the “use of the mark” in the course of trade which are unique or heightened in the USA. A current requirement for filing in the USA is to state whether the application is being used in the USA or there is an intention to use the mark sometime in the future. The USPTO also believe that the new rules should enable the office to create a more reliable trade mark register.
If you think the new requirement affects you or your business then please contact Stephens Scown for further information. We have a dedicated trade marks team, which are top 100 trade mark filers in the UK and 93% of our trade mark applications mature to registration.