The USPTO Proposes Major Trademark Application Changes for Foreign Applicants

Create Time 2018-12-17 09:12    Views:20214

Big changes could be coming for anyone looking to register a trademark in the States. As mentioned in our recent blog, the United States Patent and Trademark Office (USPTO) is considering new amendments to their trademark application process. The changes would apply only to applicants outside the U.S., requiring such applicants to apply through an American trademark attorney. 

In today’s global climate, trademarks are a valuable asset that can support your international business expansion. In 2017, there were well over 1,600,000 trademark filings in the US, with over 1,200,000 of those being submitted by foreign applicants. Foreign business owners should consider obtaining US trademark protection, especially if they plan on doing business there — this includes selling products online and manufacturing products in the U.S. 

So what will the proposed changes mean for foreign business owners who have set their sights on entering the lucrative American market? Not to worry, we’ve saved you the extra research effort to bring you an overview of everything you need to know to make the most of leveraging your trademarks in the U.S.

Why register your trademark in the United States?

For many Canadian companies, expansion south of the border is a natural step because the American market presents several attractions including geographic proximity, language and cultural similarity, and the potential for significant growth in revenue. This comes as no surprise given that Canada and the U.S. are among the world's largest trading partners with more than $1.5 billion in goods and services being exchanged between the two countries daily. 

Failing to protect your trademarks in the United States may mean missing out on a huge market and the opportunity for gaining international recognition. A registered trademark also protects your business against the risk of copycats using your brand to tap into the American market. 

So what does a U.S. registered trademark get you? For starters, it provides owners with the exclusive right to use the registered mark nationwide in association with its goods or services. It also gives owners the legal presumption of ownership of the mark, (which can provide significant cost savings in legal proceedings), and the ability to record the registration with U.S. Customs and Border Protection, (which can be used to limit the importation of infringing foreign goods).

What potential challenges might your business face with the proposed amendment? 

For foreign business owners, the proposed amendment means that they would no longer be able to apply as a foreign entity without a licensed attorney — this can be particularly costly and burdensome for a vast majority of small businesses and startups. Accordingly, the proposed change could be a deterrent for many legitimate applicants seeking to amp up their IP rights and trademark portfolio. 

What advantages would the proposed amendment offer your business? 

Despite the implications on cost, it’s important to recognize that the proposed amendments are aimed at improving the integrity of the application process. By streamlining the trademark registration process, the USPTO can better protect genuine applications against dishonest or incompetent filings, while also limiting trademark hoarding. 

A trademark application starts a legal proceeding that may be complex as applicants must comply with all requirements of the trademark statute and rules at prescribed timelines. Accordingly, those applying for a mark without professional help will incur the cost of filing fees and yet may still not secure their trademark rights. 

Why is the USPTO proposing the change? 

In recent years, the USPTO has expressed concerns over the marked growth in fraudulent trademark applications. This puts additional strain on the USPTO and makes it more likely that registered trademarks will be challenged. Unfortunately, rightful trademark owners seeking registration would have to challenge a bad registration — a process which may be time-consuming and costly. 

An attorney with insider insight may serve to weed out illegitimate claims from trademark hoarders. Attorneys, like the ones we partner with at Witmart, are also better equipped to save legitimate business owners from future costly legal problems by conducting a comprehensive trademark search, accurately identifying and classifying goods and services, and preparing responses to any office actions. 

The burden on the USPTO from fraudulent applications is further compounded by the booming number of trademark applications. From China alone, U.S. trademark applications have aggressively grown from about 3,400 filings in 2012 to about 50,000 in 2017. Accordingly, another anticipated benefit of the proposed change is quicker processing time as there would likely be far fewer inaccuracies when applications are completed by professionals. 

Overall, the proposed amendments are likely a welcome change as they are designed to improve the accuracy of the U.S. Trademark Register. As such, business owners can apply for a trademark with greater confidence in a system of integrity that will protect legitimate registrations — whether issued to domestic or international applicants. 

Want to give your business a competitive edge in the American market? Connect with one of our trademark experts to protect your trademark rights and get started today.

Disclaimer: This website is not intended to offer legal advice or to be a substitute for a consultation on a case-by-case basis with an attorney. The information provided above is meant for informational purposes only and may be subject to change. 

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