Trademark

Aftermath of USPTO new rule

To refresh your memory, the United States Patent Trademark Office enforced a new rule on August 3rd 2019 which provided that non-domicile trademark applicants filing for a US trademark had to sustain a US licensed attorney whom is in good standing. Domicile refers to the applicant’s permanent place of residence or principal place of business. The USPTO has faced criticisms against the enforcement of their rule as we will now see.

The USPTO was been criticized for trying to do immigration control by asking trademark applicants to provide proof of legal residence! Furthermore, some US attorneys believe that the USPTO is trying to adopt the US administration where they try to pursue illegal immigrants.

John E. Ottaviani partner in the Intellectual Property and Technology Practice Group has expressed his concerns for declaring proof of legal residence. He says it is not in all applicant’s best interest such as domestic violence victims. If they reveal their address they are putting themselves in danger of being victimized. He further said that if there is suspicion to believe that an applicant is trying to provide a false address then in this circumstance proof should be required. The example John E. Ottaviani provides is if in the application a ‘cn’ email address is provided but the place of residence is in the US, this maybe cause of suspicion. The USPTO trademark application asks for signature under penalty of perjury. The argument is that this should be enough in regards to proof of address.

John E. Ottaviani partner in the Intellectual Property and Technology Practice Group, also gave his opinion regarding the use of P.O Box as address for place of residence. P.O Box addresses are placed in the post office and it is used by people living legally in the US. It is used by students renting apartments on an annual basis for their college and it is a similar situation for young professionals. Therefore, if an applicant provides a P.O Box address, this should not be cause of automatic suspicion.

Also in question regarding the USPTO is who is residence referring to? It appears to be those with green cards. Green card holders are not US citizens but are those who have been granted authorization to live and work in the United States on a permanent basis. What about other legal residents living in the US? For example, students on student visa, employees on work visa, foreign investors doing business in the US who are eligible for immigrant investor visa. All the above are permanent legal residence. Therefore, they should be free from suspicion for providing a false address. They should also be free to file trademarks in the US as a legal residence without the need for a US licensed attorney.

What is the USPTO’s argument against such criticisms? They have assured that the new rules were only put into place for the following reasons:

  • Proper and accurate filing of applications
  • A way to contact the applicant if the examiner needs more information
  • The increasing number of applications from China were fraud which was time consuming and expensive to approve. They want to ensure applications are filed in good faith and prevent fraudulent applications.

(Statistics: China USPTO applications 2014 – 5100

China USPTO applications 2018 – 54,000)

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