Apparently in response to a growing number of problems with foreign trademark owners who are ignorant of (or who are ignoring) the details of the US trademark laws, the U.S. Patent and Trademark Office (USPTO) has issued a proposed rule that would require all trademarks owned by those located outside the United States to be represented by a licensed U.S. attorney.
The proposed rule would require a US-licensed lawyer to process all maintenance filings (renewals and declarations of use), as well as respond to all refusals, unless the owner of the trademark is based in the U.S. (presumably having both an address and a registration in a U.S. state or territory).
The proposed rule would apply to applications filed under the Madrid Protocol, although the rule contemplates a possible exception for the 2.7% of applications that are not refused, at least until arrangements could be made with the World Intellectual Property Organization to facilitate naming a US lawyer at the International Registration stage.
This new rule would affect several hundred thousand trademark applications and registrations at the USPTO. It is unclear how exactly it would be implemented, or when it would come into effect, although my best guess would be late 2019.
This is an unfortunate turn of events for many foreign companies who have been able to operate pro se (without a US lawyer) for years and have carefully followed the US law to the best of their ability. But the change appears to be absolutely necessary in order to combat the growing problem of fraudulent filings. By requiring a US-licensed lawyer, the USPTO will have a person who is trained in the rules and who can be held to account (through various disciplinary procedures) if the rules are ignored.
The types of problems that are commonly seen in trademarks filed by non-US-based applicants include extremely long lists of goods and services, where the applicant probably does not have a real “intent to use” the trademark on everything listed in the application; and submissions of maintenance materials that include fake specimens of use (altered “Photoshopped” images) and claims of actual use that are not valid.
We view the many changes that the USPTO has been making in recent years as important steps in maintaining the integrity of the trademark registration process. We will have to wait a few more months to see how this important development comes out as a Final Rule.