The US Patent and Trademark Office (USPTO) has issued an Order to Show Cause (OSC) against Yusha Zhang and the Shenzhen Huanyee Intellectual Property Co., Ltd. as to why Zhang and her company’s employees should not be sanctioned for engaging in unauthorized practice before the USPTO.
As we explained in a previous blog,
the US Patent and Trademark Office (USPTO) recently issued a Notice of Proposed Rulemaking announcing that foreign applicants will no longer be able to represent themselves before the USPTO and Trademark Trial and Appeal Board (TTAB).
Under the new rule, 37 C.F.R. § 11.14(c)(2), “Individuals who are not attorneys are not recognized to practice before the Office in trademark and other non-patent matters…”
Also,
only attorneys admitted to practice before the bar of the highest court of a U.S. state or jurisdiction may practice before the USPTO in trademark matters on behalf of others.
As we explained,
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.
The OSC letter to Zhang says that,
you and your employees are believed to be engaging in unauthorized practice before the USPTO in trademark matters, providing false information to the USPTO by means of entering the signatures of thousands of third parties on trademark submissions, and providing false, fictitious, or fraudulent information in trademark submissions with the intent to circumvent the USPTO Rules.
According to the USPTO,
Huanyee is a China-based organization that describes itself as specializing in registering trademarks in China. However, the company also boasts on the Huanyee website that it has filed more than 30,000 foreign trademark applications, including in the United States. While the Huanyee website also includes photographs of people identified as “Nyxia” and “Gaulle,” identifying them as “U.S. attorneys,” the USPTO is unaware of any U.S. trademark application or registration listing an email address associated with Huanyee that includes attorney information for any such persons. Indeed, the USPTO could not locate any information to suggest that you or any of your employees are attorneys qualified to practice before the USPTO in trademark matters.
The OSC includes an attachment with more than 100 pages of U.S. Trademark Serial Numbers believed to include submissions made by Zhang and her employees.
The USPTO threatened to sanction Zhang and her employees by:
1. Permanently precluding her and her employees from submitting trademark-related documents on behalf of themselves or others;
2. Striking or otherwise giving no weight to all trademark-related documents submitted by her or her employees;
3. Removing correspondence information associated with her and her employees from the USPTO’s database in all applications and/or registrations;
4. Directing the USPTO’s Office of the Chief Information Officer to permanently deactivate any USPTO accounts in which contact information related to her or her employees appears, and to take all reasonable efforts to prevent her or her employees from creating or activating further accounts;
5. Terminating all ongoing proceedings containing submissions filed by her or her employees, specifically, abandoning all trademark applications filed via MyUSPTO accounts registered to her or her employees, as the applications were apparently filed for improper purposes; and
6. Continuing to strike documents, remove information, deactivate accounts, and terminate proceedings containing submissions later found to have been filed by her or her employees.
As this situation shows, foreign business entities looking to register their trademarks in the US would be wise to work with a law firm actually based in the US.
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