Cognate's Trademark Blog

World Trademark Review Op Ed Says, “The USPTO should require foreign applicants to engage US counsel”

Here’s the abstract. On World Trademark Review, we have covered at length the USPTO’s efforts to combat improper specimens on trademark applications. It has emerged that the agency is currently considering a policy change to require applicants from outside of the United States to hire US counsel (or an authorised practitioner) to prosecute their applications (the requirement would not extend to applications filed pro se pursuant to the Madrid Protocol). In this guest policy op-ed, Eric Perrott, a trademark and copyright attorney with Gerben Law Firm in Washington DC, argues that such a move would help maintain the integrity of the US trademark register and the ultimate value of a US mark.

  • USPTO considers requiring non-US trademark applicants to hire US counsel
  • The move is part of ongoing efforts to fight fraud on the US register
  • Industry expert backs plan, says fraudulent filings devalue registration
  • Guest analysis

    Officials in the United States Patent and Trademark Office are reviewing a possible policy change to the US trademark registration system, namely that “trademark applicants from outside of the United States would be required to hire US counsel (or an authorized practitioner) to prosecute their trademark applications”.

    By doing so, we would be joining many of our allies in requiring local counsel who can provide advice on US trademark law and understand the solemnity and importance of accurate, truthful representations to the USPTO. This requirement would also help slow the influx of fraudulent trademark applications being submitted by pro se foreign applicants that are actively endangering the integrity of the US registration process by submitting doctored specimens with no intention to use the mark in the US Inadequate representation often leads to botched trademark applications, which hurts trademark owners and applicants and increases the burden on the USPTO examining corps to identify and try to help remedy these issues. To the extent fraudulent applications are being filed, the intentional submission of fraudulent trademark applications hurts the integrity of the Federal Register, as well as increases the cost of registering a trademark and the risk of developing a new brand in the US.

    As a trademark attorney that has seen these issues first-hand while prosecuting thousands of trademark applications for clients, I support this policy change and hope the USPTO fast-tracks the review and implementation of this policy.

    The seemingly “simple” act of registering a trademark requires legal analysis in dozens of different ways. From the filing basis to ownership issues to proof of use – every step of the prosecution process has the ability to drastically affect the application and, more importantly, the resulting registration. Despite what many ‘$99 trademark filing specials’ online would like trademark owners to believe, each filing has its own unique challenges; and failure to understand and appreciate those challenges can be catastrophic for a trademark owner in the long term.

    Hypothetical #1

    Pro se applicant, Company A filed an ‘intent to use’ application on January 1 for its distinctive trademark for cell phone cases intending to launch within the year. On February 1 of the same year, Company B begins selling cell phone cases under the same name and files its own trademark application.

    Company A’s application is approved for registration but, misunderstanding the USPTO’s proof of use requirement, submits pre-sale marketing documents for its cell phone case as its “proof of use” before any sales took place. Company A’s application is likely void and is not something that the applicant can correct with a simple amendment. Company A likely has no choice but to re-file its application and lose its priority date. And worse, Company B now has a claim of priority over Company A and can likely enforce its rights against Company A. Priority is one of the fundamental elements proving trademark infringement and through its misunderstanding of the law, Company A would lose its early priority date and potentially be the junior user of a trademark.

    Inadequate knowledge of the ins-and-outs of the US trademark registration system can easily become fatal to an application and, in turn, can severely disrupt a company’s business. But, even when a trademark application successfully matures to a registration, there are a host of errors that may only come up when the registrant attempts to enforce its trademark rights against a potential infringer. This includes challenges for non-use as of the application date, lack of bona fide intent to use, ownership issues, and issues with the scope of goods and services.

    Trademark law varies significantly from country to country, and it is not surprising that many international applicants (and applicants, in general) filing pro se lack the knowledge and sophistication to be able to navigate the US trademark registration system. In fact, because trademark prosecution inherently involves ‘legal advice’, the United States does not allow foreign attorneys to represent clients before the USPTO (except for registered Canadian agents.)

    Yet foreign pro se applicants are still permitted to file themselves and often make common mistakes, such as filing applicants with overly-broad ‘laundry list’ identifications of disparate goods and services that the applicant cannot realistically have an intention to sell in the US These registrations will often issue, as they meet the bare minimum required by the USPTO for registration, but are subject to challenge.

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