Emil J. Ali
USPTO Publishes Proposed Rule Aimed at Combating Trademark UPL
Updated: Aug 1, 2020
On February 15, 2019, the USPTO proposed a new rule to update the rules of practice in trademark cases, along with the rules regarding the representation of others before the USPTO. For many U.S.-practitioners this is welcome news that the USPTO is taking seriously the threat of poorly-prosecuted trademark applications by non-attorneys. Recently, the danger of domestic unauthorized practice of law (UPL) was brought to the forefront of legal news by an attorney who filed lawsuits against companies including FileMyLLC, LegalZoom, Trademarks411, TTC Business Solutions, Trademark Engine and TradeMark Express alleging, inter alia, UPL. According to IPWatchdog.com, "It is no secret to anyone in the industry; the unauthorized practice of law is rampant, and OED does nothing to stop it."
The new USPTO rule proposes to require applicants, registrants, and parties who are not located within the U.S. to be represented by a U.S. attorney. The USPTO represents that this practice is common throughout many other intellectual property offices and will be “an effective tool for combatting the growing problem of foreign individuals, entities, and applicants failing to comply with U.S. law.” The changes proposed would be to 37 CFR §§ 2.2, 2.11, 2.17, 2.22, and 2.32.
Similarly important, the USPTO plans on clarifying an often-confusing rule—37 CFR § 11.14(c). That rule, which purports to allow foreign agents and attorneys to apply for reciprocal recognition to practice in trademark matters, was often mistaken to allow any non-U.S. person to apply for reciprocity. In practice, however, the reciprocity was only offered to Canadian persons, including Canadian patent agents. Now, the USPTO proposes to clarify that only Canadian trademark attorneys and agents would be permitted to receive such reciprocal privileges.
The pertinent changes to 37 CFR § 11.14 include clarifying in one rule the categories of persons permitted to represent others before the USPTO in trademark matters, which generally would include attorneys, U.S. trademark agents, Canadian attorneys and trademark agents with reciprocity, as well as members of firms, partners in partnerships, and authorized officers of corporations and associations.
While many practitioners welcome these changes to combat foreign UPL, others hope that this is just the beginning in a long-term effort to combat domestic UPL.
For additional information, please contact McCabe & Ali, LLP at 877-OED-4097.
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