Lawyers say that while the revised guidelines, released in September, provide clarification on representing non-US trademark filers, they don’t fundamentally change their understanding of the policy.
Purvi Patel Albers, a Dallas-based partner at Haynes and Boone, believes that the USPTO issued the revised guidelines not only for the benefit of private practice lawyers but also for examiners. “Attorneys may have had questioning, but due to teleworking, I’m sure they wanted examiners to have robust guidelines to work from,” she says.
The original guidelines were published in July, and went into effect in August. The guidelines concern the USPTO’s new rule that requires foreign trademark applicants to appoint a US counsel. The USPTO issued the guidelines in response to a rise in fraudulent and bad-faith trademarks, particularly from China. After receiving requests for more clarification, the USPTO issued a revised exam guide in September.
One example of clarification in the revised guidelines is their explanation on how the rules apply to applicants from the Madrid System.
Because a Madrid application does not include a section to designate a US attorney, the guidelines published in July said that the requirement to appoint a US attorney would be waived for Madrid applications “submitted with all formalities and statutory requirements already satisfied and in condition for publication upon first action”.
The updated guidelines further clarify that if an “examining attorney issues an office action that includes any substantive refusals and/or requirements, the examining attorney will also include a requirement to appoint a US attorney”.
Albers says that some of the questions about the earlier guidelines related to Canada and whether Canadian applicants would be exempt from the requirement to appoint a US counsel.
“Canadian trademark attorneys who are appointed in addition to US counsel, registered in good standing in Canada and formally reciprocally recognised by the PTO’s Office of Enrolment and Discipline, can represent Canadian entities in a limited fashion,” Albers says.
Under the guidelines, Canadian attorneys can prepare, sign and file new applications (with the exception of TEAS Plus applications). They can also prepare and sign prosecution documents, but a US attorney needs to file the application and authorise the examiner’s amendments.
“The additional benefit of being deemed an appointed attorney is that they can discuss matters relating to an application with an examining attorney, as well as receive courtesy copies of PTO correspondence regarding a subject filing,” Albers explains.
‘An extraordinary situation’
While the revised guidelines primarily serve to provide clarity, some uncertainties remain. The guidelines require applicants to make their domicile address public, but one of the vaguer elements of the guidelines suggests there could be exceptions: “In an extraordinary situation, an individual applicant or registrant may seek a waiver of the requirement to make public their domicile address.”
Stephen Baird, a shareholder at Greenberg Traurig in Minneapolis, speculates that a need for privacy could lead a client to request a waiver, adding that a famous individual might not wish to disclose their domicile address.
Still he acknowledges that there’s “presently no guidance I’m seeing on what the petitioner would consider suitable extraordinary circumstances to justify a waiver of making the domicile address public”.
Albers says she could see the waiver’s application in the context of an individual’s safety, such as someone who has sought asylum or a restraining order.
“As I see it, it would have to be an individual applicant. From an entity standpoint, since state and local corporate filings are already publicly available, I can’t imagine the waiver applying,” she says.
Baird adds: “Over time I imagine we’ll start to see decisions to interpret this rule, and the guidance that will help inform people going forward.”
In response to a question over whether further guidelines would be helpful on this particular issue, Lynn Jordan, a Washington, DC-based partner at Kelly IP, says that they would, but that she doesn’t find the lack of specificity particularly debilitating.
“I can’t imagine that many people will seek to keep [their domiciled address] private. I don’t necessarily think they need to publish [a clarification]. I don’t think it will be an issue for most people.”
Adjusting to the guidelines
One provision that necessitated some adjustment from firms was the requirement to provide Bar information.
Jordan recalls the morning when the guidelines went into effect.
“We had to have all the paralegals gather all the Bar information. You could no longer submit the forms unless the Bar information was typed in,” she says.
She adds that the team was initially unsure whether the requirement to enter such information applied to the entire legal team or only to the primary attorney, but they realised that it only applied to the primary attorney.
Albers also recalls her team adjusting to the requirement. “I have my state Bar number memorised but many of my colleagues did not, so they had to keep pulling out their cards,” she says.
In some cases, the guidelines have resulted in more work from foreign clients. “I’ve definitely seen an uptick in work,” Jordan says.
Baird believes the effects have been positive. “We were thrilled when we learned this would go into effect,” he says.
Albers agrees that this was the right step: “I’m very excited about this rule. There have been so many fraudulent bad faith filings.”
