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

AuthorAmanda Marston, Hope Hamilton
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.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
November/December 2020 n LANDSLIDE 39
Bolstering Condence
or Burdening Parties?
The U.S. Counsel Rule
By Amanda Marston and Hope Hamilton
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
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

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