The United States Patent and Trademark Office (“USPTO”) has noticed an alarming uptick of improperly filed trademark applications coming from foreign agents, particularly in China. It has become common practice for some foreign agents to throw hundreds of applications at the USPTO and see what sticks- or is registerable. In the intellectual property community, these people are called trademark trolls, as they abuse the trademark registration process by registering marks without any intention of actually using them only to sell the marks to another party.
These trolls shirk USPTO rules and regulations to file masses of quick applications. This unethical practice has caused a bottleneck in trademark examinations, due to improper applications taking away focus from legitimate businesses and their properly filed trademark applications.
The USPTO is actively deterring these foreign agents from engaging in this shady practice by enforcing the US Counsel Rule. Created in September 2019, this rule mandates that all trademark applicants and registrants have a United States address for their trademark filing, and more importantly, a U.S. licensed attorney to file and represent them in filing and registering trademarks. U.S. attorneys have the duty to comply with U.S. trademark laws and USPTO regulations, and in turn, should limit the number of improper trademark applications that are filed.
But even with the U.S. Counsel Rule, foreign trademark trolls have adapted their methods, and are now soliciting attorneys to allow them to use their signatures, bar numbers, and firm addresses to file shoddy and improper trademark applications in another attempt to circumvent the U.S. Counsel Rule.
Attorneys across the United States have noticed the increased demand for access to their signatures- and that they can earn easy money by providing them.
In the Los Angeles area, two attorneys were recently found to have allowed foreign agents to use their information and signatures to file trademark applications. These attorneys both turned a blind eye to the improper filing of trademarks, allowing trademark trolls to file hundreds of applications without the necessary assistance of a U.S. Attorney.
Attorney Li, located in the City of Industry, was paid between $1,000.00 to $3,000.00 a month for allowing a foreign agent to file hundreds of trademark applications with her bar number and signature. Attorney Yang, located in Monterey Park, was paid a flat fee of $1,500.00 per month as a rental payment to use her name and bar number on applications. Both attorneys admitted to the USPTO that they did not review their clients’ trademark applications, and as a result, both the attorneys and their clients were sanctioned and disciplined by the USPTO.
U.S. attorneys are trusted to safeguard the integrity of U.S. trademarks, they are trusted to be diligent in representing their clients and meeting the bare minimum requirements for submitting applications that comply with the USPTO trademark laws and regulations. When an attorney cannot comply with the most basic requirements, the USPTO can and will investigate, publicly chastise, and place the attorney on probation.
As a consequence of her actions, Ms. Li has been placed on a 12-month probation and has to regularly check in with the USPTO to ensure she is complying with their rules and regulations. Ms. Yang was also severely punished. She was suspended from practicing before the USPTO for 30 days, which prevented her from properly serving her legitimate clients and businesses., along with a 12-month probationary period.
The Office of Enrollment and Discipline may also notify other federal agencies and State Bar associations of the suspensions and probations that these attorneys faced, and this can lead to additional severe penalties.
The USPTO has a zero-tolerance policy for fraud and will investigate and sanction any attorney or business it suspects is trying to deceive or defraud the USPTO by engaging in the unauthorized practice of filing trademarks without the overview of an attorney. If a business is caught engaging in this practice, they too will be sanctioned with the deactivation of their USPTO account, being barred from working with the USPTO and having their trademark registrations or applications terminated as well.
The USPTO U.S. Counsel Rule is here to stay, and trademark trolls and attorneys alike need to face up to the reality that they can no longer get away with submitting fraudulent trademark applications. Registering a trademark is serious business, and it needs to be treated as such to ensure that the value of the marks is maintained. Brands represent the core identities of businesses, and without their protections, thousands of businesses would suffer from the mistakes of unethical attorneys or trademark trolls.
If you or your business is considering hiring a trademark attorney, please make sure to check out the USPTO’s disciplinary decisions page, to ensure that your attorney has not been disciplined by the USPTO for unethical or illegal practices. Links to this page, along with the Final Orders for the attorneys mentioned above can be found here:
USPTO Decisions of the Office of Enrollment and Discipline:
Final Orders for Sanctioned Los Angeles Attorneys:
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