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USPTO Outlines Trademarks Administrative Sanctions Process

https://depositphotos.com/55946639/stock-photo-devastated-man.htmlThe U.S. Patent and Trademark Office (USPTO) today announced in an unpublished Federal Register Notice that it has established an administrative process for investigating submissions filed with the USPTO in trademark matters that appear to violate the Trademark Rules of Practice. The announcement comes as part of the USPTO’s broader effort to improve the integrity of the U.S. trademark register amid a surge in fraudulent filings, largely from China.

Most recently, on December 10, 2021, the Office issued a “Show Cause Order” imposing sanctions against Huanyee Intellectual Property Co., Ltd. and its Executive Director, Yusha Zhang, for violations of the USPTO’s trademark rules of practice, including providing false domicile information for applicants, impermissibly entering the signature of the named signatory on declarations and verifications, and violating other USPTO Rules and the USPTO’s website terms of use. Huanyee had filed more than 15,000 fraudulent trademark submissions before the USPTO that were believed to contain signatures in support of verifications or declarations that were entered by the Respondents, rather than the named signatories.

According to today’s Federal Register Notice, going forward, the USPTO will identify a potentially fraudulent application via communications from “internal sources, such as examining attorneys and data analytics personnel, or through external sources, such as Letters of Protest, the TMScams@uspto.gov mailbox, law enforcement, or media reports.” Upon a determination that an investigation is warranted, the application under investigation may be removed from examination—specifically, “suspended pending administrative review.” The applicant would thus only be able to make the following electronic submissions: (1) an express abandonment, (2) a withdrawal of attorney, or (3) a petition to the Director under Rule 2.146. 37 CFR 2.146.

If the investigation ends without sanctions, all deadlines will be reset and the application will be returned to the examination process. If the Office determines that conduct intended to violate USPTO rules has been identified, a “Show Cause Order” will be issued asking the individuals or entities involved to show cause as to why the office should not impose sanctions by a certain deadline.

For those registrations that were issued prior to the administrative sanctions process being initiated, the Office will not terminate the registrations, but the USPTO’s electronic records will be updated to include a note in the prosecution history indicating that the registration was subject to an order for sanctions. This could affect the underlying validity of the registration and will be considered “a final decision adverse to the owner’s right to keep a mark on the register under section 15 of the Trademark Act of 1946, 15 U.S.C. 1065.” The Notice thus recommends that owners of a sanctioned mark file a new application.

Comments on the sanctions process should be submitted to TMFRNotices@uspto.gov by February 5, 2022.

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