John E. Ottaviani, Partner in the Intellectual Property & Technology Practice Group, contributed his insights to World Trademark Review on the “unprecedented” surge in trademark applications in advance of a new rule from the U.S. Patent and Trademark Office that goes into effect August 3. The rule requires all trademark applicants who are not domiciled in the U.S. to be represented by a U.S. licensed attorney.
In the World Trademark Review article, “USPTO experiences massive surge in trademark applications from China,” John noted that “the rise is almost definitely due to the upcoming new USPTO rules that go into effect on 3 August. Those rules, which were confirmed by the office on July 2, will require all applicants not domiciled in the United States to engage U.S. licensed attorneys to file and prosecute trademark applications. This move has been criticized by some foreign applicants, who believe it could lead to a steep rise in costs.”
John also said, “This spike in applications is going to slow down the examination process for all applicants. The USPTO examining attorneys will have greater caseloads and will take longer to initially review the applications – therefore, the average time from application to registration for all applicants will increase.”
John attributes the rule change to USPTO concerns of alleged fraud by some Chinese applicants, especially around the submission of improper specimens of use. He expects “…the USPTO will scrutinize the specimens from these applications carefully,” Ottaviani adds.
To read the World Trademark Review article, please click here.
