Posts Tagged: "trademark register"

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.”

On August 11, the U.S. Department of Commerce Office of Inspector General (OIG) published a final report on the audit of the United States Patent and Trademark Office (USPTO) trademark registration process. Since 2015, the USPTO has seen a rapid uptick in potentially fraudulent trademark applications, and a previous audit in 2012 found that more than 50% of audited trademark maintenance filings contained goods/services not in use in commerce. The current audit determined whether inaccurate trademark applications are prevented by the USPTO from being entered and maintained on the trademark register, and further assessed the USPTO’s management of fraud on the register. The report ultimately found that the trademark registration process was ineffective in this respect.

Senator Thom Tillis (R-NC) yesterday led a hearing of the Senate Committee on the Judiciary’s Subcommittee on Intellectual Property titled “Fraudulent Trademarks: How They Undermine the Trademark System and Harm American Consumers and Businesses.” The hearing included five witnesses from academia, private practice and the business community who testified on ways to declutter the U.S. trademark register, curb fraudulent trademark filings from China, and improve current mechanisms for enforcing trademarks in U.S. courts, among other topics. All agreed that the U.S. Patent and Trademark Office’s (USPTO’s) August rule change requiring that foreign trademark applicants use U.S. counsel has likely only temporarily helped to ebb the flow of fraudulent filings from China, as bad actors are already adjusting their strategies.

E-commerce giant Amazon is “known for its disruption of well-established industries,” as the company’s Wikipedia entry will tell you. What started out as a humble online bookstore has become one of the world’s premier e-commerce sites. Along the way, it has expanded into cloud computing, consumer electronics, and film production, among other diverse ventures. It is responsible for the U.S. Post Office delivering packages on Sundays, and recently sent countless states and municipalities into a frenzy over a competition to host the company’s second headquarter site. Now, Amazon seems primed to disrupt the market for IP legal services with the launch of its IP Accelerator.

At a hearing of the House Judiciary Committee’s Subcommittee on Courts, Intellectual Property, and the Internet this morning, titled Counterfeits and Cluttering: Emerging Threats to the Integrity of the Trademark System and the Impact on American Consumers and Businesses, members of Congress expressed concern over the steep rise in trademark applications by Chinese filers, many of which have been found to be fraudulent. The problem has been exacerbated by poor enforcement on the part of platforms like Amazon, eBay, and Walmart; by the limited authority of the U.S. Patent and Trademark Office (USPTO) to revoke registrations once issued; and by incentives offered by the Chinese government in the form of subsidies to Chinese applicants for U.S. trademarks, said panelists.

This week features a busy schedule of hearings on Capitol Hill involving technology, innovation and intellectual property topics. In the House of Representatives, the House Financial Services Committee will get their chance to vet Facebook’s Libra cryptocurrency, while other hearings focus on wireless spectrum policy, antitrust issues posed by Internet platforms, as well as issues facing the U.S. trademark system, including counterfeits and register cluttering. In the Senate, Google censorship, oversight of the U.S. Copyright Office and NASA’s plans to send a manned mission to Mars will be under the microscope. Elsewhere, the Information Technology and Innovation Foundation explores the current state of robotics and how they can help American productivity.

Trademarks must be continuously used to be enforceable. If you stop using them, they are lost. This also means you should have evidence to prove use of your trademark. If your use is challenged, you will have to prove that you’ve been using your trademark, and you need the correct evidence. This just happened to McDonalds in Europe. Even though they were using the BIG MAC trademark, they didn’t have the correct evidence to prove that they had continuously used that trademark for the previous five years, and they lost their European registration.  A truly shocking result.

While all eyes are on China and how it plans to tackle bad faith infringers, the United States Patent and Trademark Office (USPTO) also is cleaning house, implementing stricter rules for acquiring and maintaining trademark registrations. Unlike other countries, the U.S. is a “first to use” country, not “first to register.” This means, generally speaking and with some exceptions, you acquire ownership by being the first to use a trademark, not the first to register. You acquire these automatic common law rights through use, not registration. Why register then? Aside from being able to use that nifty registration symbol and obtain additional remedies in an infringement suit, you also expand your trademark rights nationally. Suddenly, with a registration in hand, your common law rights in, say, California and Nevada expand presumptively (and over time conclusively) to all 50 states. This is why registrations are so valuable, and this is why the USPTO’s initiatives to remove fraudulently obtained and dead marks have such a significant impact on brand conscious clients. Over the last two years, the USPTO has launched several pilot programs and initiatives.