The US Patent and Trademark Office (USPTO) has published a trademark alert announcing actions to remove fraudulent and otherwise invalid marks from the federal trademark register.
As we discussed in this blog back in 2023,
the United States Patent and Trademark Office (USPTO) issued new examination procedures for reviewing domicile addresses for trademark applicants.
This step is intended to help combat widespread fraud (and attempted fraud) on the USPTO and the US business community.
USPTO rules now require foreign-domiciled trademark registrants and applicants to use a US-licensed attorney.
According to the USPTO in 2023,
An increasing number of foreign-domiciled trademark applicants, registrants, and parties have been filing inaccurate and possibly fraudulent submissions with the USPTO that do not comply with U.S. trademark law or the USPTO’s rules. Many appear to be doing so on the advice or with the assistance of foreign individuals and entities who are not authorized to represent trademark applicants, registrants, or parties before the USPTO (i.e., they are engaging in the unauthorized practice of law).
The USPTO noted at the time that
Foreign individuals and companies are trying to scam the United States Patent and Trademark Office (USPTO) by improperly using U.S.-licensed attorneys’ names and bar credentials in trademark submissions or having U.S.-licensed attorneys sponsor USPTO.gov legal support staff accounts for people who are not the attorney’s support staff.
The violations of the trademark filing rules have continued.
The Alert notes that
Last fiscal year, the USPTO sanctioned several foreign filing firms and removed over 52,000 invalid applications and registrations. In the past six months, the agency continued its anti-fraud efforts, issuing 11 administrative orders targeting the removal of around 10,500 trademark applications and registrations.
The USPTO orders address issues like:
- Trademark filing firms engaging in the unauthorized practice of law;
- trademark documents filed with improper signatures;
- trademark applications filed with false information; and
- firms impersonating the USPTO and inventing non-existent trademark registration requirements and filing fees.
Many of these administrative orders and sanctions involve businesses in China.
For example, in the matter of In re: Shenzhen Huanyee Intellectual Property Co. Ltd., the USPTO found that Respondents submitted over 19,000 submissions across at least 15,932 trademark records for an improper purpose.
The USPTO noted in that case that
The evidence demonstrates that the conduct infects the entirety of the trademark proceeding because all initial application forms and other trademark submissions made through USPTO.gov accounts registered to or used by Respondents were filed in violation of multiple USPTO Rules. These submissions further contained fatal defects such as improper signatures, rendering them invalid.
The USPTO thus imposed the following sanctions:
- Permanently preclude Respondents and any employee, agent, or anyone acting on behalf of Respondents from submitting trademark-related documents to the USPTO;
- Strike or otherwise give no weight to all trademark-related documents submitted by Respondents or any employee or anyone acting on behalf of Respondents;
- Remove correspondence information associated with Respondents and any employee, agent, or anyone acting on behalf of Respondents from the USPTO’s database in all applications and/or registrations;
- Deactivate any USPTO.gov accounts in which contact information related to Respondents appears, and take action to prevent Respondents from creating or activating further accounts;
- Block future financial transactions from credit cards used to pay filing fees associated with the improper submissions and/or associated with Respondents;
- Terminate all ongoing proceedings containing submissions filed by Respondents or any employee, agent, or anyone acting on behalf of Respondents; and
- Continue to strike documents, remove information, deactivate accounts, and terminate proceedings containing submissions later found to have been filed by Respondents or any employee, agent, or anyone acting on behalf of Respondents.
Bottom line: if your business is located outside the US, and you want to register your trademarks in the US, you need to use a US-licensed attorney.
Just like the haiku above, we like to keep our posts short and sweet. Hopefully, you found this bite-sized information helpful. If you would like more information, please do not hesitate to contact us here: https://aeonlaw.com/contact-us/.
