USPTO Drops Its Demands For Applicants' Green Cards

from the begrudgingly-slides-back-into-its-own-lane dept

The US Patent and Trademark Office's side venture into immigration enforcement has come to an abrupt end. It recently instituted a US attorney requirement for foreigners filing trademark applications with the Office. This was apparently done to limit the flow of bogus trademark applications, a large number of which originated in China.

This wasn't the problem. The problem was that the USPTO started requiring examiners to verify the immigration status of non-US citizens applying for trademarks. It was no longer enough to provide some form of address verification, like a utility bill. The USPTO was now demanding proof of permanent residence, which would limit applications by non-US citizens living in this country to green card holders.

Notably, the USPTO does not require applicants to be legal residents of the United States. And only recently did it even require applicants from foreign countries to retain a US attorney for filing.

After receiving a bit of backlash for branching out into immigration enforcement, the USPTO is backing down on its demands for green cards. Paul Singer of WGBH (who broke the original story) has more details on the rollback.

Friday morning, the trademark office scrapped the guidance and issued new instructions that dropped any reference to immigration status. The new guidelines to staff say only that an applicant may be asked to provide proof of residence at the U.S. address, such as a lease or a utility bill.

The new instructions also remove provisions that would have required foreign applicants declaring U.S. addresses to provide proof of legal status even if they had obtained a U.S. trademark attorney. The change makes it clear that proof of address is only needed in cases where the applicant does not have a U.S. attorney.

This walk-back indicates the USPTO was looking to be in the immigration business but had trouble getting examiners to buy in on the new focus. If it was a wholly legitimate directive, there'd be no reason to alter it so soon after its enactment. Now that this directive has been clarified, examiners can go back to doing their actual job -- fielding ridiculous trademark applications -- and stop worrying about whether they're going to have to start sharing cubicle space with ICE officers.

Filed Under: immigration status, trademarks, upsto


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  • identicon
    Pixelation, 16 Sep 2019 @ 2:43pm

    Can someone explain

    Why are non-US citizens allowed to get patents at all? Serious question. I'm wondering how it benefits those of us subject to US patent law.

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 16 Sep 2019 @ 2:55pm

      Re: Can someone explain

      Because US citizens want to be able to get patents in foreign countries, otherwise their invention cannot be protected outside the US.

      reply to this | link to this | view in chronology ]

      • identicon
        Anonymous Coward, 17 Sep 2019 @ 10:10am

        Re: Re: Can someone explain

        Is anyone else at least a little surprised that the USA has not simply tried to give its own patents global effect, somehow?

        reply to this | link to this | view in chronology ]

    • icon
      OldMugwump (profile), 16 Sep 2019 @ 3:10pm

      Re: Can someone explain

      Why are non-Mellonville residents allowed to get patents at all? I'm wondering how it benefits those of us subject to Mellonville patent law. Why are non-Elm Street residents allowed to get patents at all? I'm wondering how it benefits those of us subject to Elm Street patent law. If you think patents are a good idea (personally I'm unconvinced, at least for the general case), then that good idea is a better idea if it's global.

      reply to this | link to this | view in chronology ]

    • icon
      Thad (profile), 16 Sep 2019 @ 4:08pm

      Re: Can someone explain

      There are rather a lot of non-US citizens who sell products in the US. And a lot of US citizens who sell products outside the US.

      Generally, people from other countries would like to be able to sell their products under their exclusive brand names inside the US -- Harry Potter, Sony, ARM, Hyundai, etc. And people from the US would like to be able to sell their products under their exclusive brand names in other countries. And so, generally, the US enters into trade agreements with those other countries; they'll enforce our copyrights, patents, and trademarks, and we'll enforce theirs.

      It's a lot more complicated than that, of course, but that's the general idea.

      reply to this | link to this | view in chronology ]

      • identicon
        Pixelation, 16 Sep 2019 @ 5:05pm

        Re: Re: Can someone explain

        Thanks for the explanation. That makes sense. Now if we can get some real reform to kill off NPE's...

        reply to this | link to this | view in chronology ]

  • identicon
    carlb, 16 Sep 2019 @ 7:12pm

    The US attorney requirement for foreigners filing trademark applications with the Office is itself a fiasco. I'm on the Ontario-NYS border and tried to file for the US equivalents of my existing Canadian marks just before this bizarre requirement was introduced. It's a simple task that one should be able to do without a lawyer, although occasionally USPTO will return with an "office action" demanding that the list of goods and services associated with the registered mark be modified or narrowed.

    Every application for a USPTO registered mark is public info and, because every ambulance chaser out there knows that applicants are being forced to lawyer up for no good reason, I'm getting inundated with all manner of unsolicited e-mail from every lawyer in the country attempting to market their "services".

    And why did USPTO do this? Apparently their objection was with a select few "trademark mill" firms who are in the business of claiming to get a US trademark on behalf of individual applicants. When the time came to prove that the registered mark was actually in use, the "proof" that some of these high-volume low-cost registration firms was sending in was often a clipart depiction of the product or even a photo of a competing product. The USPTO didn't like that and (even though the problem was mostly commie China) decided to screw over every non-US applicant by forcing them to waste money obtaining US lawyers.

    And the worst of the spam passing as "attorney advertising"? Much of it is coming from the very "trademark mills" who caused the problem in the first place. As long as they can find a US attorney to file their garbage, they're all still in business. It's just the small business or non-commercial applicant, who normally would be "pro se" instead of being lawyered up, who is being screwed by this new regulation - which doesn't solve any of the issues it was intended to address.

    Complete waste of time and money. Pity that Canada doesn't do the same thing to US applicants - it would be deserved, but I'm hesitant to write to my local MP to suggest it as it'd still be the little fish (and not huge firms who have already lawyered up) who would encounter the needless extra costs.

    reply to this | link to this | view in chronology ]


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