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Josh Conley \ October 31, 2018

A new rule has been proposed by the USPTO that will require foreign trademark applicants to have a United States attorney file trademarks at the Trademark Office.  The exact content of the rule is still forthcoming. Currently, foreign attorneys are prohibited from representing clients, but foreign applicants are permitted to represent themselves.

A recent wave of foreign applications has hit the USPTO with applications from China increasing by 1100% in the past six years.  Many of these applications relate to trademarks that the applicant has no intention of actually using to conduct business in the United States.  This in turn reduces the efficiency of the Trademark Office in examining legitimate applications. More importantly, these meritless applications present a possible barrier to registering valid trademarks that may be deemed too similar to allow registration.

These applications have lead to an increased level of scrutiny for those seeking trademark registration in good faith.  Conducting a trademark common law and registration search is always a good idea. Without this new rule, Conducting a search prior to filing now potentially includes a number of similar marks that are being used or even intended to be used in the United States.  In turn, a trademark attorney must go to greater lengths to determine the legitimacy of any conflicting marks that are identified while clearing a mark for filing.

The hope is that by requiring a U.S. attorney, counsel will be provided to prevent these bad apples from being submitted.  In other instances, a trademark attorney can help clean up a foreign application that has simply gone astray due to language barriers or differences in trademark laws.  In the event that a bad faith mark is filed, there will be someone to take to task for allowing the application to be submitted. 

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