From 3 August 2019, USPTO passed a rule to require applicants, registrants or parties to a trade mark proceeding, who is not domiciled in USA, to be represented in all trade mark matters before the USPTO by a local attorney who is licenced to practice in law. The USPTO has encountered problems such as dubious trade mark applications, submission of fraudulent evidence of use in commerce and digitally altered trademarks used to support proof of use in commerce.
There was a recent surge in suspicious specimens of use as applicants submitted false claims of use, thereby not only cluttering the Register but such acts affect the accuracy and integrity of the Register as a useful business tool for the public. The USPTO is taking the accuracy and integrity of the Register very seriously as the Register must serve as a reliable reflection of trade marks in use in commerce in the US. This requirement that foreign domiciled applicants must engage a local licensed trade mark attorneys is not new as there are similar requirements in Japan, China, Canada, Germany and Malaysia to name a few. Whilst there is no requirement in Singapore for trade mark agents to be licensed there are nonetheless problems associated with the requirement of only providing a local address for service. The requirement of only a local address for service is frequently abused in complete disregard of its true intent that the address should be a real and effective address. ISTMA intends to work with IPOS to explore how the practice may be improved.
The USPTO ruling can be found here.