In recent years, there has been an increase in fraudulent trademark applications being filed in the U.S. Patent and Trademark Office (USPTO). Such applications are fraudulent due to any of the following: trademark images used as specimens which do not correspond to goods or services in actual use, trademark images having been doctored by photo editing tools, misstatements and deceptions regarding the earliest date of use of a trademark, etc.
To control and counter such fraudulent trademark applications, the Office of Enrollment and Discipline (OED) of the USPTO is generally empowered with the ability to discipline trademark applicants, but the OED is limited to disciplining U.S.-based trademark applicants.
It appears that many fraudulent trademark applications stem from foreign applicants; that is, applicants who are not physically present in the United States. The percentage of foreign trademark applicants rose to 26% of all trademark filings in the USPTO Fiscal Year 2017 (115,402 applications), and the percentage of foreign trademark applicants who are not represented by an attorney rose from about 25% of all foreign trademark applicants in USPTO Fiscal Year 2015 to 44% of all foreign trademark applicants in USPTO Fiscal Year 2017 (50,742 applications).
With modern electronic filing technology, anyone with a computer and Internet browser can access the online trademark application interface and file a trademark from anywhere in the world. Accordingly, the OED has previously been powerless to stop such fraudulent filings, especially if they originate outside of the United States.
However, starting August 3, 2019, the USPTO will implement new rules which require foreign applicants for trademarks to be represented by U.S.-based attorneys. In this manner, the OED will be able to discipline the U.S.-based attorneys, and so the new rules are expected to deter and reduce the fraudulent filings from foreign applicants.
Note that the new rules only apply to foreign applicants, and not to U.S.-based applicants. However, it is likely that U.S.-based applicant would eventually hire U.S.-based attorneys who could be disciplined by the OED.
In addition, the new rules only apply to post-filing proceedings to complete a trademark application. Accordingly, a foreign applicant can perform an initial filing of one's trademark application, but to complete the process, a U.S.-based attorney must step in to represent the foreign applicant. This exception was made to comply with international trademark treaties to which the United States is a signatory, allowing foreign applicants to file a trademark application in the U.S. on the basis of corresponding trademark applications in another country.
Although such new trademark filing rules appear unfair to foreign applicants, it is the hope that the new rules will stem the tide of fraudulent trademark filings.
Written by Anthony J. Natoli. Please note that the above discussion is for general information purposes only. For more information, please contact John H. Choi & Associates LLC at email@jchoilaw.com or 201.580.6600.