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The Gerben Law Firm has been at the forefront of reporting on the increase of fraudulent applications being filed from China. As a response to these fraudulent filings (and others), the USPTO is considering a rule that would require foreign applications to hire a US attorney to prosecute a trademark application. Eric Perrott authored an op-ed for the World Trademark Review that discussed the benefits of the proposed Rule.

Here are some paraphrased excerpts from the piece:

Eric discussed how the requirement would slow the influx of fraudulent trademark applications of non-US origin that initially include doctored specimens, which “are actively endangering the integrity of the US registration process”.

Eric also discussed how some are concerned about this being a deterrent to legitimate trademark applications from foreign companies.  While acknowledging this, he also mentioned “the benefits of effective trademark counsel will, in my opinion, outweigh the burden of requiring said counsel”, and that many foreign companies already engage with local counsel in order to increase chances of obtaining registration.

 

Article: “The USPTO should require foreign applicants to engage US counsel: guest op-ed”.  World Trademark Review Blog.  July 24 2018.