Posts Tagged: "fraudulent trademark filings"

On Friday, December 10, the United States Patent and Trademark Office (USPTO) 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 relating to improper trademark submissions. The 198-page Order, comprised mostly of an exhibit listing all of the company’s trademark filings, indicates that the Respondents named in the Order “have filed more than 15,000 trademark matters before the USPTO” and “engaged in the unauthorized practice of law, provided false domicile information for applicants, impermissibly entered the signature of the named signatory on declarations and verifications, and violated other USPTO Rules and the USPTO’s website terms of use.”

The U.S. Patent and Trademark Office yesterday published a final rule implementing the Trademark Modernization Act of 2020 (TMA), which was signed into law as part of the Consolidated Appropriations Act of 2020 last year. The new regulations go into effect on December 18, 2021, except for the implementation of the shorter response period for office actions, which will go into effect on December 1, 2022.

Senators Thom Tillis (R-NC) and Chris Coons (D-DE) and Representatives Hank Johnson (D-GA), Doug Collins (R-GA), Martha Roby (R-AL) and Jerry Nadler (D-NY) yesterday introduced legislation to modernize the U.S. trademark system. The Trademark Modernization Act of 2020 is in part a response to the surge in fraudulent trademark filings, largely originating from China, that both the U.S. Patent and Trademark Office (USPTO) and Congress have been grappling with over the last year. Perhaps most notably, in a stated effort to better protect consumers by minimizing confusion about goods and services, the bill would restore the rebuttable presumption of irreparable harm when a trademark violation has been proven (thus clarifying eBay v. MercExchange).   

New rules governing all trademark filings with the United States Patent and Trademark Office (USPTO) went into effect two days ago, on February 15. Although the headline is a move to mandatory electronic filing for virtually all trademark applications, some of the rules have caused significant controversy within the trademark bar, especially a requirement that applicants provide a contact email address for the applicant, not just their counsel. The USPTO’s shift to mandatory electronic filing is relatively uncontroversial, since more than 99% of applications under Section 1 or Section 44 of the Trademark Act are already filed electronically. There are certain exceptions under the rule for foreign applicants under international agreements, and for non-traditional scent and flavor marks, where a physical specimen will still need to be mailed to the USPTO. But for all other applicants, electronic filing will now be mandatory unless the USPTO’s filing system – the Trademark Electronic Application System (TEAS) – goes down.