The U.S. Patent and Trademark Office recently changed rules that significantly impact how trademark applications are submitted from foreign entities. Our firm has had recent inquiries from overseas attorneys wondering how to navigate these new laws. Read on to learn the ins and outs of pursuing trademark applications in the United States when you’re a foreign corporation.
The New Foreign Trademark Application Law: The Basics
The new rule only applies to trademark applicants: When you’re a foreign-based entity (i.e., a company or individual located outside the United States), you are now required to submit your application through a U.S.-based attorney. This rule does not apply to any domestic company or individual. If you reside in the United States or have a commercial establishment in the United States, you may still file trademark applications without the use of an attorney, should you so desire.
Why the Change Was Implemented
The rule change for foreign entities was created due to the influx in foreign companies and individuals submitting trademark applications at the USPTO. Specifically, China has been providing subsidies to anyone who obtains a registered mark in a foreign country. Officially, the Chinese government has stated that this program is to encourage people and companies to grow their business overseas. However, whether knowingly or not, this subsidy program has increased fraudulent trademark submissions to the USPTO.
Prior to the Chinese subsidy program, the USPTO was able to properly manage foreign trademark submissions. However, when the Chinese government began offering $800 for every foreign registered mark obtained, the fraudulent submissions (e.g, fraudulent specimens of use) at the PTO became unruly, requiring action.
Related: Update on China’s Amended Trademark Laws
In the United States, you must establish use of a mark to obtain a registration. In order to obtain a registration of marks submitted from China, the USPTO began to notice an influx of fraudulent specimen. For example, if the applicant was pursuing a registered trademark on an apparel brand, the applicant may cut off the hangtag of the actual brand of the apparel item and replace it with a hangtag displaying the applied-for mark. The trademark office realized this was an issue because the same image displaying a different hangtag was being submitted in additional applications.
The new rule was implemented to prevent fraudulent submissions. Requiring U.S.-based counsel to submit trademark applications/specimen submissions should prevent fraudulent marks from being unknowingly issued, thereby preventing further degradation of the integrity of this U.S. trademark system. This rule also ensures the ability to discipline attorneys who do submit fraudulent information to the trademark office. Prior to this rule being submitted, it was difficult to discipline overseas applicants and attorneys. The new process should help prevent a large number of fraudulent submissions from registering.
Reactions and Implications in the Legal World at Large
Unfortunately, such a rule change will affect all foreign nationals and not just the bad actors. So, if you’re a law firm in Canada or Australia and have been effectively handling U.S. trademark applications on behalf of your clients, you’re no longer able to continue to do so without the help of a U.S.-based attorney or law firm.
However, even with the new rule, the foreign firm will continue to manage the client. The communication with the U.S. firm would likely consist of a request to submit a U.S. trademark application. Given the foreign firm’s prior expertise in U.S. trademark law, such a request would likely include the information necessary to submit the application on behalf of the client/applicant, with potentially little to no color provided by the U.S.-based attorney.
Prior communications between the foreign firm and the U.S. firm could establish specific procedures for submitting trademark applications by the U.S. firm on behalf of the foreign firm and their client. Such procedures may entail prior trademark search requirements to determine the prospect of receiving a likelihood-of-confusion rejection, reviewing the trademark for descriptiveness requirements, and ensuring that the goods and services listed in the application are compliant with U.S. requirements, among others.
Regardless of how foreign firms will comply with the new rule, most foreign attorneys will recognize that the change strengthens both the United States trademark system and their client’s own U.S. trademark registrations.
Related: 5 Common Issues with DIY Trademarks
Working With Neugeboren O’Dowd on Your Foreign Trademark Application
Neugeboren O’Dowd PC frequently works with foreign counsel in dozens of countries on all matters of IP and provides substantial trademark counsel on behalf of foreign applicants at the Trademark Office. Such work includes filing trademark applications, responding to office actions in pending applications, and managing Trademark Trial and Appeal Board proceedings.
We are happy to provide foreign firms with trademark work in their local jurisdiction and have established many long-standing international relationships. We provide the same care and attentiveness to the foreign firm’s clients as our own, and we rest easily knowing that the work provided by the foreign firm is of the same quality that we provide to our clients.