Bolstering Confidence or Burdening Parties? The U.S. Counsel Rule

• Author: Amanda Marston, Hope Hamilton
• Pages: 39-41

Published in Landslide® magazine, Volume 13, Number 2, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2020 by the American Bar Association. Reproduced with permission. All rights reserved.

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November/December 2020 n LANDSLIDE 39

Bolstering Condence

or Burdening Parties?

The U.S. Counsel Rule

By Amanda Marston and Hope Hamilton

T

hrough a series of initiatives and rule

changes, the U.S. Patent and Trademark

Ofce (USPTO) has been on a mission to

ght fraud and bolster condence in U.S.

trademark registration and administra-

tive proceedings. But, where the USPTO

is closing doors, are bad actors nding

windows?

One of the USPTO’s more recent initia-

tives—namely, the implementation of the

U.S. counsel requirement—went into effect

on August 3, 2019. This article explores

whether the USPTO’s goals in implementing

the rule have been met and whether parties

are nding new, creative ways to circumvent the rule. Although

the data is still limited, it is arguably a little of both. When paired

with the USPTO’s other initiatives and new policies, it seems the

USPTO is making meaningful progress in boosting condence

within the business community and its users.

Previous Counsel Rule Governing Nondomiciled

Trademark Applicants and Registrants

Prior to August 3, 2019, the rules for who could represent non-

domiciled applicants and registrants before the USPTO in

trademark matters were relatively lax, especially when com-

pared to many jurisdictions around the world. Domestic and

foreign applicants, registrants, and parties to Trademark Trial

and Appeal Board (TTAB) proceedings were authorized to rep-

resent themselves. And, if represented by counsel, that counsel

could be either a U.S. attorney “who is an active member in

good standing of the bar of the highest court of [a U.S. state

or territory]”1 or a foreign attorney or agent in a country with

reciprocal recognition who could attest that “he or she is regis-

tered or in good standing before the patent or trademark ofce

of the country in which he or she resides and practices.”2

There were not (and are not currently) any special admissions

or exams required to practice non-patent law at the USPTO.3

Impetus for the New U.S. Counsel Rule

The USPTO’s decision to implement the rule was one initia-

tive among many implemented after the USPTO observed

“a signicant increase in the number of applicants who

are not fullling their legal and ethical obligations to le

accurately and in good faith.”4 Improper behaviors observed

included ling applications with no bona de use or intent

to use, fake or doctored specimens of use, inaccurate contact

or address information, unauthorized changes of corre-

spondence addresses, and fraudulent consent agreements

and assignments of ownership. The USPTO also observed

an “exponential” rise in fraudulent lings from non-U.S.

applicants seeking to capitalize on subsidies offered by the

applicants’ home countries, in particular, from China.5

The goal of the rule and other initiatives6 was to reduce

fraudulent lings, increase compliance with U.S. trademark

law and USPTO regulations, improve the accuracy of trade-

mark submissions to the USPTO, and safeguard the integrity

of the U.S. trademark Register.7 And, from a practitio-

ner’s perspective, the rule was expected to reduce delay and

increase efciency in trademark examination and TTAB pro-

ceedings involving foreign-domiciled parties. The USPTO

hoped that the requirement of U.S. counsel would address

these concerns by ensuring parties are represented by individ-

uals with knowledge of U.S. trademark rules, who could be

held accountable for improper lings or improper behavior.

Although the USPTO weighed concerns that the rule

would require non-U.S. applicants to incur more costs, it

determined those concerns were outweighed by the signi-

cant costs that others, including the USPTO, were incurring

as a result of applicant abuses. The USPTO also pointed out

that the United States was an outlier among many non-U.S.

trademark ofces, which require local representatives to pros-

ecute trademarks on behalf of foreign applicants.8

After thorough vetting and public comment, the rule was

adopted and implemented on August 3, 2019.9 The new rule

requires that all applicants and parties before the USPTO and

TTAB not domiciled10 in the United States appoint authorized

U.S. counsel.

Impact of the U.S. Counsel Rule

Immediate Practical Impact

The immediate practical impact of the rule varies. For for-

eign-domiciled owners of existing trademark registrations,

U.S. counsel will only be required to appear for post-regis-

tration actions, such as renewals. For trademark applications

pending prior to implementation of the new rule, U.S. counsel

must be appointed if an ofce action or other post-ling action