New US Trademark Rule Should Have Minimal Impact, Canadian Lawyers Say

The US Patent and Trademark Office recently published a new rule that requires a US lawyer for all non-US applicants or parties to Trademark Trial and Appeal Board proceedings. The changes were noted by Canadian lawyers, stating that it’ll only affect trademark lawyers and agents, not a Theft lawyer or everyone else, and that it won’t affect them too much, although it will cost some money.

The USPTO change is set to go live at August 3, and is specifically targeted at Canadian trademark attorneys and agents, and it means that they’ll have to go through some extra steps, namely hiring a US-based lawyer, to act on behalf of their clients south of the border. The rule noted that Canadian trademark attorneys and agents will continue, should they be eligible, to be recognized

Smart & Biggar Ottawa partner Philip Lapin notes that it’ll affect firms that regularly work directly in the US, upping the costs they have to deal with. The changes will mean that a client company will hire a firm like them, to act as a middleman, who’ll then hire a US attorney. The good thing is that, just like how having a Theft lawyer helps with theft cases, having a US-based lawyer handling US trademarks grants assurance that an expert is on the case.

USPTO Director and Under Secretary of Commerce for IPs, Andrei Iancu explained the purpose for the new rules, saying that it was aimed at fighting fraudulent submissions to the office, and to ensure that the USPTO’s register was as accurate and reliable as possible.

Iancu notes that the USPTO needs to maintain accuracy and integrity, due to the fact that corporations across the world are reliant on the state of their US trademark in making key legal decisions about their companies and their brands.

US authorities have advised Canada’s legal system that any submission filed to the USPTO on behalf of Canadian clients prior to Aug. 3 still adhere to the old ruling. Following that, however, any Canadian lawyer or legal firm will be counted as an additional practitioner, and any clients operating in Canada must also have a US lawyer as part of their team for filing to the USPTO, including any prior responses.