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U.S. Lawyer Rule Curbs Sham Trademark Applications, Iancu says

Oct. 24, 2019, 3:45 PM

The U.S. Patent and Trademark Office is reining in fraudulent trademark applications thanks to a new rule that non-U.S. residents must use a U.S. attorney to secure and maintain marks, agency director Andrei Iancu said.

“So far, it looks like it’s working really well,” Iancu said Oct. 25 at the American Intellectual Property Law Association’s 2019 annual meeting. “At least it dramatically cuts down on pro se applications from overseas where we have seen the highest levels of fraudulent filings.”

The office implemented the rule, which bars foreign pro se applications, Aug. 3 in a bid to stem a flood of non-compliant trademark applications from abroad. The volume of applications from China has spiked rapidly in recent years, according to PTO data.

“It is, to some extent a bit early but I like what I’m seeing so far,” Iancu said in an appearance at the meeting. Anecdotal evidence and agency data shows the rule is working, Iancu told Bloomberg Law.

Attorneys are tracking the impact of the rule, because it could lead to more business for U.S. law firms from foreign entities, which file more than a quarter of U.S. trademark applications. The rule mirrors requirements in the European Union and other countries, the patent office has said.

The patent office also is reviewing public comments on a proposed fee for registered trademark holders that aren’t using their marks.

“This is to provide the proper level of incentive to delete goods on your own that you are not actually using in commerce,” Iancu said about the fee proposal.

To contact the reporter on this story: Malathi Nayak in Washington at mnayak@bloomberglaw.com

To contact the editors responsible for this story: Rebecca Baker at rbaker@bloomberglaw.com; Keith Perine at kperine@bloomberglaw.com

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