The US Patent and Trademark Office (USPTO) has issued a Sanctions Order against foreign trademark filing entities and terminated over 52,000 trademark applications and registrations connected to the entities.
The Respondents include Shenzhen Chenhaiyun Tech. Co., Ltd. subsidiaries Shenzhen Seller Growth Network Tech. Co., Ltd., Shenzhen Qianhai Bishengdao Network Tech. Co., Ltd., and Shenzhen Qianhai Be-Victory Network Tech. Co., Ltd., and Chenhai Cloud IIPTO and their various corporate officers.
According to the USPTO, the China-based family of firms submitted documents on behalf of others without the proper authority or qualifications.
The USPTO said that to conceal its identity the firms:
- Sought out the cooperation of US-licensed attorneys and then misused their credentials and faked their electronic signatures;
- Repeatedly signed documents using other people’s names;
- Submitted fake specimens of trademark use and;
- Misused USPTO.gov accounts.
In its Sanctions Order, the USPTO noted that only attorneys who are active members in good standing of the bar of the highest court of a US state or jurisdiction may practice before the USPTO in trademark matters on behalf of others.
Since August 2019, foreign-domiciled parties must be represented by a qualified US-licensed attorney before the USPTO. 37 C.F.R. §2.11.
Also, noted the USPTO, regardless of the applicant’s or registrant’s domicile, individuals who are not US-licensed attorneys may generally not
- give advice to an applicant or registrant in contemplation of filing a U.S. trademark application, application-related or registration-related document;
- prepare or prosecute any U.S. trademark application, response, or post-registration maintenance document;
- sign amendments to applications or registrations, responses to Office actions, petitions to the Director, or request to change correspondence information; or
- authorize any other amendments to an application or registration.
See 37 C.F.R. §11.5(b)(3).
(However, there’s a limited exception for Canadian trademark agents or attorneys who have been granted reciprocal recognition to practice before the USPTO in trademark matters for Canadian filers.)
US-domiciled parties can file their own trademark applications with the USPTO, but many applicants use the services of trademark attorneys, especially if a mark is contested.
All signed documents submitted to the USPTO must comply with Rule 2.193 and therefore must be personally signed by the named signatory, including the personal entry of all electronic signatures. A person may not delegate the authority to sign trademark-related submissions, and no party may sign the name of another.
According to the USPTO, it
identified tens of thousands of serial numbers in which Respondents’ submissions repeatedly and willfully violated USPTO Rules. These trademark records include Respondents’ violations of the rules concerning signatures, certifications, and representation of others before the USPTO, as well as the Terms of Use. Respondents repeatedly engaged in the unauthorized practice of law, prosecuting trademark submissions on behalf of others without the requisite qualifications required by 37 C.F.R. §11.14. To conceal their unauthorized practice of law, Respondents engaged in a widespread pattern of impermissibly signing submissions using others’ names. To further disguise their misconduct, Respondents entered into arrangements with a number of attorneys who were later subject to discipline by OED for violating USPTO rules of practice before the Office. Respondents falsely identified U.S.-licensed attorneys as the signatories for thousands of trademark documents when, in fact, Respondents were the signatories to those documents.
The Respondents characterized their unauthorized practice of law as “a misunderstanding, or merely a mistake, asserting that preparation and submission of trademark forms would not be understood to be the practice of law.” They argued that they didn’t know any better and “were relying on the counsel they purportedly received from attorneys they consulted.”
The USPTO was unconvinced: “Respondents’ claimed ignorance of the law provides no defense or excuse for avoiding sanctions.”
According to the USPTO, “By removing these records from the trademark register, the USPTO is helping ensure the register accurately reflects trademarks that are actually being used in commerce.”
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