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Tag: PTO

US Trademark Office Proposes Requiring Foreign Trademark Applicants to Use a US Attorney

About two months ago, the US Patent and Trademark Office proposed a rule change for representation of foreign-domiciled trademark applicants. The rule would affect trademark applicants, registrants, or parties to a proceeding such as an opposition or cancellation, whose domicile or principal place of business is not located within the United States or its territories. If the rule is implemented, these parties – or their foreign attorneys – would need to seek an attorney who is licensed to practice within the US.

The change has three stated goals. First, to increase “customer compliance” with federal trademark law. The second goal is to ensure the accuracy of submissions to the USPTO, and the third is to ensure the integrity of the US trademark register.

These goals all strike me as a little impersonal and machine-like, which may be the purpose behind an efficiency-driven rule change. They really just boil down to the hope that using a US attorney will increase the likelihood that the trademark application or registration, or proceeding flows smoothly through the Trademark Office because the person responsible for it will more likely be familiar with the Trademark Office’s rules. Of course, I’m not sure that these rules are effective measure for achieving the goals: plenty of US attorneys file trademark applications but shouldn’t – just because an attorney is barred in a US state does not mean that he or she is qualified to file a trademark application with the USPTO. We see lots of non-trademark attorneys that screw up filings because they just don’t know what they are doing. I am sure there are many foreign-based trademark attorneys who are better at prosecuting US trademarks than US non-trademark attorneys.

Many practitioners believe this is a response to the influx of Chinese sellers on Amazon and their use of protections offered through the Amazon Brand Registry 2.0 platform. This seems possible. We have seen more cases filed by Chinese applicants without an attorney of their own. Last week, we filed two actions against trademarks owned by Chinese-based applicants without any attorney at all. In both cases, the applications included specimens that appeared fraudulent, digitally-created photograph mock-ups meant to trick a US Examiner into accepting the application. And, both were instances where the applicants were also selling knock-off products on Amazon of my clients’ products. More so, it is well known that, while it costs as little as $225 to file a trademark application pro se, the Chinese government will award around $800 to a successful registration. Therefore, filing fake applications can be a revenue source for a Chinese resident.

The rule change is certainly good news for US attorneys, because it will drive more business to us. Much of that business likely doesn’t really need us – it can probably be competently handled by an experienced foreign attorney. But, some foreign applicants will benefit. And, some fraudulent trademark applications will be curtailed. If the Trademark Office were to require foreign applicants to first find a US attorney, this would raise the bar for filing slightly and would undoubtedly reduce the number of junk trademark applications.

We handle trademark applications in the US and outside the country frequently, both for domestic and foreign clients.  If you have questions about this rule change, or if you are in need of a US attorney, please don’t hesitate to contact us or call +1-602-281-6481.

Patent Dashboard Displays a Clear, but Sad, View of Patent Pendency

The Patent Office has taken a number of steps in the last year or so toward transparency, approachability, and clarity.  It recently released the Patent Dashboard, or “Data Visualization Center.”  The Dashboard is a simple display of the average time it takes to get to various milestones in the patenting process.  The data is clear to read, but gruesome to contemplate.  As I previously noted, the typical amount of time between filing and receiving a first response from the Patent Office runs between 2 and 4 years; the Dashboard shows that it averages 35.4 months, or just under 3 years.

Some have criticized the Patent Office for admitting the horrible state the patent system is in.  I think, however, that this Dashboard represents another progressive step.  The PTO recently created the Inventor’s Eye, a newsletter for the inventor community.  A number of months ago, it developed and then expanded the Green Tech Accelerated Pilot Program.  Under the significant budgetary burdens that the PTO faces, these are real gains.

Job-Creating Patents

In an Op-Ed piece at the New York Times I came across via Patently-O, Paul Michel and Henry Nothhaft argue for the infusion of $1 billion into the Patent Office.  What I noticed most in this article was their citation that each patent issued by the Patent Office “is associated with 3 to 10 new jobs.”  Now, clearly, this doesn’t hold true for every patent.  But, on average, this is a startling number.

The patent system both flourishes and flounders under the influence of money.  Costs – those associated with government filing fees and attorney’s fees – are the largest reason to not pursue a patent.  The authors thus propose a tax-credit to offset those costs.  If such a tax-credit spurred the application of a few more patents, and a few of those patent applications matured to patents, a few more jobs would be created, and a few more tax dollars would be returned to the economy.

Additionally, they argue that a billion-dollar investment in the Patent Office to overhaul the computer system and hire and train more employees would drastically improve the patent backlog, thus allowing possibly game-changing applications to enter the market sooner.  New patents allow small companies to obtain financing (provided it’s available) and grow, in turn hiring employees, striking deals with other businesses, providing investment and earning potential to the public, etc.