Trademark Office Drops Its Demand For Applicants To Prove Immigration Status

[tacobell fan]

Facing a backlash from its own staff, the U.S. Patent and Trademark Office (USPTO) has scrapped new guidelines that would have required foreign trademark applicants living in the U.S. to prove they had legal immigration status.

Trademark examiners had complained that the guidelines were moving the trademark office into immigration enforcement and might have barred any immigrants other than green card holders from registering a trademark.

The trademark office had issued new rules in August in an effort to combat a flood of bogus overseas trademark applications, mostly from China. The trademark office said Chinese applications had risen from about 3 percent of the total annual caseload in 2015 to more than 15 percent of all applications by the middle of this year. Many of these applications were bogus, based on counterfeit or simply erroneous documentation. But they created a backlog in the system, taking time and resources away from staff reviewing and approving legitimate trademark claims.

The new rules, effective Aug. 3, require anyone filing a trademark application from outside the United States to have a U.S.-based attorney working with them. The theory is that U.S. attorneys will not file counterfeit or otherwise improper applications. Also, having a U.S. attorney ensures that the USPTO knows how to contact an applicant if it needs to request more information.

But as WGBH News reported exclusively in August, trademark examiners objected to guidelines sent out by headquarters that asked staff to confirm the immigration status of any non-U.S. citizen applying for a trademark using a U.S. address. The instructions suggested an applicant would need to show proof of "legal permanent residence" — generally understood to be a green card. "Foreign citizens must comply with U.S. visa immigration laws to claim the U.S. as their permanent legal residence,” the guidance noted.

There is no legal requirement for a trademark applicant to be a U.S. citizen or to live in the U.S.

The trademark office said it was not intending to wade into immigration enforcement, but staff were not convinced.

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.

"The reason we're revising the guidance is because we've had multiple requests for additional clarification," said USPTO Press Secretary Paul Fucito. "We want people to understand that the key to determining whether you need a U.S. lawyer or not is where you are domiciled."

Rep. Hank Johnson, D-Ga., chairman of the House subcommittee with oversight of the trademark office, told WGBH "I’m heartened to see the USPTO take concerns raised by trademark community seriously, and that it acted swiftly to ensure that the implementation of its new rule is squarely focused on the problem-at-hand: addressing the rise of fraudulent trademark applications."

There is no data for how many trademark applicants might have been affected by rules requiring a green card or other immigration documentation, but experts in the field say immigrants make up a huge portion of the American "innovation economy" — new inventions and new businesses.

Harvard Business School Professor William Kerr told WGBH News in August that “roughly 25 percent of our patents or our business creation happen through first generation immigrants in the United States.” Kerr cautioned that data on innovation is all based on patents — the inventions, not the commercial trademarks — but he said it serves as an illustration that foreign-born immigrants to the United States make up a disproportionate share of the innovation economy overall.

Paul Singer is investigations editor at WGBH's New England Center for Investigative Reporting.