The United States Patent and Trademark Office (USPTO) has issued a “Show Cause Order” imposing sanctions against Huanyee Intellectual Property Co., Ltd. and its Executive Director, Yusha Zhang, for repeated improper trademark submissions.
As the Order states,
USPTO rules provide that
only attorneys admitted to practice before the bar of the highest court of a U.S. state or jurisdiction (“U.S. licensed attorney”) may practice before the USPTO in trademark matters on behalf of others.
(Individuals are allowed to submit trademark applications for themselves and their own businesses.)
Individuals who are not U.S. licensed attorneys may not, on behalf of others, (1) give advice to an applicant or registrant in contemplation of filing a U.S. trademark application or application-related document; (2) prepare or prosecute any U.S. trademark application, response, or post-registration maintenance document; (3) sign amendments to applications, responses to Office actions, petitions to the Director, or request to change correspondence information; or (4) authorize any other amendments to an application or registration.
This is a relatively new rule. As the Order explains,
Since August 3, 2019, the USPTO Rules have required that all applicants must provide and keep current the address of their domicile and that any foreign-domiciled applicant, registrant, or party to a proceeding must be represented by a U.S. licensed attorney in trademark matters before the USPTO.
As we explained when discussing this matter in a previous blog,
this rule change came about because of the boom in foreign trademark filings – from 19% in 2015 to 26% in 2017. 44% of those filings in 2017 were by foreign applicants who filed pro se (without a lawyer), and many filings were of low quality, with missing or erroneous information, swamping the resources of the USPTO and clogging up the system.
According to the Order,
Huanyee is a China-based organization that advertises that it assists clients with registering trademarks in China, has filed more than 30,000 foreign trademark applications, including in the United States, and offers U.S. trademark registration services via its website.
Respondents are not authorized to make submissions to the USPTO on behalf of others in trademark matters. Ms. Zhang is not a U.S. licensed attorney, nor does Huanyee have any U.S. licensed attorneys on staff who supervise Respondents’ work.
The USPTO had threatened to sanction Zhang and her employees. In response, Zhang argued that
sanctions should not be imposed because Respondents were unfamiliar with the requirements of the USPTO Rules, did not willfully violate them, and are taking actions to correct the issues raised.
An old legal maxim states that “Ignorantia juris non excusat” – ignorance of the law is no excuse. The USPTO was unpersuaded by the Respondents’ arguments:
First, those participating in the trademark registration process are presumed to be aware of the governing regulations and are expected to comport themselves appropriately. … Second, Respondents’ claimed ignorance of the law provides no defense or excuse for avoiding sanctions. … Third, Respondent’s conduct need not be willful to be sanctionable.
Thus, ordered the USPTO,
all trademark application proceedings involving submissions by Respondents or filed through a uspto.gov account registered to or controlled by Ms. Zhang or any officer, employee, or agent of Huanyee are ordered terminated.
Respondents are precluded from preparing, signing, or submitting any paper or presenting or contesting any issue in any ongoing application proceeding or any future trademark proceeding before the USPTO on behalf of others. Ms. Zhang and any employees, officers, or agents of Huanyee may not prepare, sign, or submit trademark-related documents on behalf of others under any circumstances, and if they wish to apply for U.S. trademark registration themselves, they must be represented by a U.S. licensed attorney.
As we’ve said before, foreign business entities looking to register their trademarks in the US would be wise to work with a law firm based in the US. Using an unlicensed foreign patent practitioner to file in the US can be a waste of money.
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