After August 3, 2019 All Foreign Trademark Applicants Will Be Required To Appoint A Licensed U.S. Attorney

The United States Patent and Trademark Office (USPTO) announced a new rule that all trademark applicants and registrants whose domicile or principal place of business is not located within the United States must be represented by an attorney licensed in the United States. This rule becomes effective on August 3, 2019.

  • This rule will not immediately impact applications filed before August 3, 2019 or existing registrations. However, if an application filed before August 3, 2019 becomes the subject of an office action issued after the date, or if it is necessary to file an extension of time or a specimen to complete an application under Section 1(b) (intent to use), the foreign applicant will be required to designate an attorney licensed in the United States to respond to the office action.
  • Foreign owners of registrations issued prior to August 3, 2019 will not need to appoint a qualified attorney licensed in the United States until it is time to file a declaration of continued use or a renewal.
  • After August 3, 2019, all new filings at the USPTO not in compliance with this rule will be informed through an office action. The applicant will have the usual six (6) month period to respond to the office action and failure to comply will result in abandonment of the application.
  • Foreign filers using a TEAS Plus application, the most popular application used by foreign filers, will be unable to submit the application unless the filer completes the section designating a qualified US attorney as the applicant’s representative.
  • There is one exception to this rule. Applications filed under the Madrid Protocol that satisfy all formalities and statutory requirements, and thus are ready for publication without the issuance of any office action, are not required to appoint a qualified US attorney of record. However, if the application filed under the Madrid Protocol receives an office action, the applicant will be required to designate a qualified US attorney when responding to the office action.

For more information about the USPTO’s new requirement, please visit https://www.govinfo.gov/content/pkg/FR-2019-07-02/pdf/2019-14087.pdf

For questions about how to comply with the United States Patent and Trademark Office’s new rule, please contact Beth Frenchman at bfrenchman@gibney.com or at (212) 906-3334.

Angelo Mazza to Moderate INTA Panel on Working with Millennials

Intellectual Property Partner Angelo Mazza is moderating a Table Topic at INTA’s 2019 Annual Meeting in Boston, MA. His session “Working with Millennials: Are They Really That Different?” will take place on May 18. This will be a deep dive into issues facing law firms as more millennials join firms and the conflicts that sometimes arise between generations. The INTA Annual Meeting is the largest and most influential gathering of brand owners and intellectual property professionals from around the world.

Angelo counsels clients in developing brand protection and enforcement strategies, and works extensively with law enforcement on intellectual property-related crimes. He has trained over 60,000 law enforcement officials including U.S. Customs and Border Protection, Immigration and Customs Enforcement and the Federal Bureau of Investigation.

 

Gibney Hosts Coded: Dress and Discrimination with NYC Bar Association

Gibney will host the NYC Bar Association’s  Fashion Law Committee meeting on May 14. The breakfast meeting will take place from 8:30 – 9:30am to discuss “Coded:  Dress and Discrimination. ” This discussion will be focused on employment matters including dress codes, grooming standards, gender identity/expression and best practices for fashion brands.

Panelists include Gibney attorneys Maja Szumarska and Bob Tracy as well as Brittny Saunders from the New York City Commission on Human Rights.

Maja Szumarska is an attorney in Gibney’s Intellectual Property Group. She focuses on brand protection and enforcement. She represents many prominent brands in litigation matters involving trademark, trade dress and copyright infringement claims and enforcement actions in federal court.

Bob Tracy is an attorney in Gibney’s Labor and Employment Group. He practices management-side labor and employment law and business litigation. Bob keeps clients informed of changing employment laws and develops strategic employment policies to avoid litigation, maintain a healthy work culture and minimize risk. He has conducted seminars on employment issues including ADA, FMLA, sexual harassment and union avoidance.

 

Maja Szumarska to Moderate Panel on Ex Parte Seizure Orders at INTA Conference

Maja Szumarska is moderating a Table Topic at INTA’s 2019 Annual Meeting in Boston, MA on May 20. Her session is titled “TM11 Ex Parte Seizure Orders under 15 U.S.C. § 1116(d) of the Lanham Act: Recent Developments in Case Law.” She will lead a discussion on recent cases involving the seizure of counterfeit goods under the Lanham Act and provide recommendations for increasing the likelihood of successfully obtaining an ex parte seizure order. The INTA Annual Meeting is the largest and most influential gathering of brand owners and intellectual property professionals from around the world.

Maja focuses on brand protection and enforcement. She represents many prominent brands in litigation matters involving trademark, trade dress and copyright infringement claims and enforcement actions in federal court.  She also advocates on behalf of clients in anti-counterfeiting policy and legislation matters before local, national and international industry associations.

Brian Brokate Recognized in World’s Leading Trademark Professionals

Intellectual Property Group Head Brian Brokate was named to the World Trademark Review’s global list of the World’s Leading Trademark Professionals for the fifth year in a row. Recognized as one of New York’s top individuals and law firms in enforcement litigation, Brian and Gibney rank among the most prominent IP lawyers and law firms handling this type of work.  World Trademark Review is a global independent daily news and information service dedicated exclusively to reporting on trademark issues for in-house and private practitioners internationally.

Angelo Mazza Joins DC Roundtable on IP Trade Practices and Protection

IP Partner Angelo Mazza will participate in a trade roundtable sponsored by U.S. Senator Bill Cassidy.  Based on his knowledge of CBP IP trade practices and counterfeiting issues,  Angelo was asked to be a part of the roundtable to share views on trade transparency, terror financing, gang activity and drug trafficking related to intellectual property right protection. The session will take place on February 6, 2019 in Washington, DC.

Angelo works extensively with law enforcement on IP related crimes. He has organized and conducted training sessions for CBP, ICE and the FBI in the United States.  He has also conducted training for law enforcement in almost all 50 states at all levels.

Angelo Mazza Speaks on Customs and Border Protection Strategies

Angelo E.P. Mazza spoke at the International Quality and Productivity Center (IQPC) 21st annual Anti-Counterfeiting and Brand Protection Summit in San Francisco. He also serves on the Advisory Board.

Angelo led the workshop “Customs and Border Protection: Combating Cross-Border Trade in Counterfeit Goods” on January 28, 2019. He shared effective practices to be proactive in developing an anti-counterfeiting strategy and working with CBP to effectively enforce rights at the border.

This workshop provided participants with an understanding of how to effectively forge a collaborative working relationship with law enforcement that meets anti-counterfeiting objectives.

Topics included:

  • Effective ways to record and provide notice of registered rights with customs in order to obtain seizures
  • The type of information that rights holders need to provide CBP’s to provide them with the knowledge of what products are authentic vs. counterfeit
  • Analysis of the U.S. Customs and Border Protection interim rule to allow information

Brian Brokate and Angelo Mazza to Speak at Intellectual Property Rights Enforcement 2019

Brian W. Brokate and Angelo E.P. Mazza will speak at the Practising Law Institute’s Intellectual Property Rights Enforcement 2019 event on January 17, 2019. Brian Brokate is also co-chair of the event. This will be the eighth year that Brian and Angelo have participated in this program.

Angelo will lead the first panel “Current Government IP Enforcement Programs.” Topics include federal and civil intellectual property enforcement, DOJ prosecuted crimes and determining factors, the CHIP program, substantiating advertising claims, “Made in USA” and other promotional promises, “Influencer” marketing and truth-in-advertising in social media, data security and consumer privacy. Brian Brokate will speak on the “Anticounterfeiting Update” panel. Topics include 2018 direct liability case law updates and trends, seizures and ex parte remedies, contributory liability, U.S. legislative updates and recent U.S. Customs and Border Protection regulations.

Intellectual Property Rights Enforcement 2019 provides information to in-house and outside counsel on effective strategies for protecting intellectual property rights.

For more information on the program, visit the PLI website.

Brian Brokate and Maja Szumarska Co-author Chapter on Anticounterfeiting Enforcement

Brian Brokate and and Maja Szumarska co-authored a chapter in PLI’s course handbook for the program Intellectual Property Law Institute 2018 on October 9, 2018. This program provides a complete analysis of key events in all areas of IP, including updates on cases, legislation and government agency developments that all IP lawyers need to know.

Their chapter is titled “Developing Trends in Enforcement and Remedies: What’s New in Civil, Criminal and Government Actions.”

For more information or to register for the event, visit the PLI website.

Brian Brokate Spoke on Anticounterfeiting at Practising Law Institute

Brian Brokate spoke at the Practising Law Institute (PLI) Intellectual Property Law Institute 2018 on October 1, 2018. His session was titled “Anticounterfeiting Update.” Topics included recent anticounterfeiting cases, legal developments and best practices for protection. Brian and associate Maja Szumarska also co-authored a chapter in PLI’s course handbook for the program.

Brian Brokate is head of Gibney’s Intellectual Property Practice Group. He has extensive experience in trademark and copyright enforcement procedures to combat infringement and counterfeiting.

For more information on the program, visit the PLI website.