USPTO threatens sanctions against Chinese IP company


On June 8, 2021, the U.S. Patent and Trademark Office of the Chinese Intellectual Property Law Firm, Shenzhen Huanyee Intellectual Property Co., Ltd. an Order to Show Cause regarding the provision of false information in over 8,000 U.S. trademark applications. Specifically, the ordinance alleges that Huanyee “was illicitly practicing trademark matters before the USPTO, providing the USPTO with false information by entering the signatures of thousands of third parties in trademark applications, and providing false, fictitious, or fraudulent information in trademark applications with the intent to circumvent USPTO rules . ”As a result, trademark applications being pursued by Huanyee may be invalid.

The USPTO states that Huanyee is involved in a widespread unauthorized legal practice:

Huanyee is a China-based organization that specializes in trademark registration in China. However, the company also boasts on the Huanyee website that it has filed more than 30,000 foreign trademark applications, including in the United States. While the Huanyee website also contains photos of individuals identified as “Nyxia” and “Gaulle” who have been identified as “US attorneys”, the USPTO is not aware of any US trademark filing or registration associated with Huanyee Contains email address containing legal information for any such person. In fact, the USPTO has not been able to find any information to suggest that you or any of your associates are attorneys qualified to practice trademark matters before the USPTO.

Between 2016 and 2019, you and your employees routinely practiced trademark matters before the USPTO, despite USPTO rules at all relevant times that only lawyers licensed in the United States were authorized to represent others. The information available indicates that you have advised and advised clients on filing a trademark application and other documents with the USPTO, prepared and processed trademark applications, prepared and submitted arguments and changes in trademark matters, and communicated with the Office on behalf of Customers. If performed by a non-attorney on behalf of a third party, any such act constitutes an unauthorized legal practice in violation of USPTO rules. After the USPTO introduced the US Counsel Rule on August 3, 2019, which stipulates that foreign applicants must be represented in trademark matters before the USPTO by US lawyers, you and your employees violated this rule and continued to do so Violate other USPTO rules, including by not participating in law enforcement proceedings.

In addition, Huanyee is responsible for the improper entry of the
Signature of others and the provision of false, fictional and / or fraudulent ones
Information in trademark applications to the USPTO:

The implementation of the US Counsel Rule banned the practice of foreign filing firms acting as correspondence intermediaries, requiring foreign filing firms to have U.S. registered attorneys represent clients applying for U.S. trademark registration for all filings to the USPTO. However, the USPTO has evidence that you and your staff continued to practice in front of the Office and conspired with others to circumvent USPTO rules by improperly entering others’ signatures and providing false, fictional, and / or fraudulent information in trademark filings specify.

As of last year, users have been required to register for a MyUSPTO account and use it to access electronic forms and submit trademark documents through the electronic trademark registration system (“TEAS”). Your name appears in registrations for three different MyUSPTO accounts, registered to the email addresses [email protected], [email protected] and [email protected] The office records indicate that your accounts are responsible for filing over 8,000 pending trademark applications, and that users of your accounts have filed amendments and response documents in many other trademark application and registration documents even though you are not an attorney or otherwise authorized to act on behalf of others to take a stand in trademark matters.

Information about the transfers made from your MyUSPTO accounts indicates that the same person or entity is using those accounts to enter other people’s signatures. Although the documents appear to be routinely electronically signed by applicants or attorneys directly on the electronic form, the fact that filings are often filed in quick succession and signed by different people with postal addresses in different geographic areas is strong evidence that that you or your employees have to enter the electronic signatures of others on the TEAS forms. For example, during a one-hour period between 2:29 a.m. (East) and 3:29 a.m. on May 14, 2021, one of your MyUSPTO accounts was responsible for submitting four new TEAS Plus requests and five responses to Office actions. each with an attached declaration in which a total of seven different alleged signatories were identified who, according to the TEAS forms, entered their electronic signatures personally.

… It is implausible that every signatory who was allegedly thousands of kilometers apart was personally present during the same hour to enter their electronic signatures on these TEAS forms.

Your MyUSPTO accounts are also responsible for submitting TEAS submissions at a frequency that makes it unlikely and likely impossible for an individual to fill out the forms, let alone coordinate the personal entry of electronic signatures on TEAS forms by seemingly independent parties . On March 16, 2021 alone, your accounts were responsible for submitting 201 different TEAS forms, most within minutes, with several being submitted seconds apart. Based on the volume and speed of submissions coming from your accounts, we will assume that you are sharing access to your MyUSPTO accounts in violation of the USPTO Website Terms of Use.

In addition, you and your employees are also responsible for filing several hundred applications identifying the owners as legal entities incorporated in the United States but containing incorrect residence information. The USPTO received hundreds of new applications filed on behalf of companies such as Alpharerry Inc, Bluedeep Trade Inc, Chengde International Trading LLC, Diubl LLC, OTBBA LLC, Jincheng Inc, Kingheng. Inc “,” Vanjo LLC “,” Fiberhome Technology Co., Ltd. “,” Qianxing Fenghui LLC “,” Ryhom LLC “,” Flycamp Trading LLC “,” Suntravel Trading LLC “,” Zhishan Industrial Inc “,” Virfine Trade “Inc”, “Xinxiu Family Inc”, “HCLife LLC”, “Woxeon Technology Inc”, “Wector Home America LLC”, “Fengshun LLC”, “Yifan LLC”, “Promotion Inc”, “Perfso Trade Inc” and “PTTAGING LLC,” which originally claimed to be a California corporation with a domicile address of “18351 Colima Road, Rowland Heights, CA” a new domicile address of “6547 North Academy Blvd, Colorado Springs, CO.”

Both the Rowland Heights and Colorado Springs addresses are just commercial mail receiving agencies that can forward or scan mail for people or businesses elsewhere in the world. These addresses are not valid domicile addresses for these applicants. It was only when you are challenged again that you or your employees have named lawyers Shan Zhu or Yi Wan and provided information about their place of residence that suggests that the applicants are in fact outside the United States. … Because of the multiple attempts to provide false residency information to companies outside the United States and reluctance to list an attorney pending dispute, the USPTO can only conclude that you and your employees are providing false, fictitious, and / or fraudulent information the USPTO to disguise applicants’ foreign residence addresses in an attempt to circumvent the requirement of a US attorney …

Based on the foregoing, the USPTO has reason to believe that all applications and trademark documents filed through your MyUSPTO accounts are in violation of the USPTO rules and are invalid. The applications and documents were improperly signed, appear to have been submitted without the owner or an identifiable authorized person carrying out a reasonable investigation into the factual claims contained therein, and are likely to contain false, fictional and / or fraudulent information. The information available also indicates that such filings were made with the intent to circumvent USPTO rules, including, but not limited to, 37 CFR Sections 2.11 (a), 2.193, 11.14, and 11.18 (b). In addition, USPTO records indicate that these transmissions were made using the MyUSPTO system and TEAS in violation of the USPTO website terms of use.

The sanctions listed in the USPTO are:

(1) Permanently discourage you and your employees from filing trademark-related documents on your own behalf or on behalf of others;
(2) conspicuously or otherwise neglects any trademark-related documents submitted by you or your employees;
(3) Remove correspondence information associated with you and your employees from the USPTO’s database in all applications and / or registrations;
(4) Instruct the USPTO Office of the Chief Information Officer to permanently disable all USPTO accounts that contain contact information about you or your employees and use all reasonable endeavors to prevent you or your employees from opening additional accounts create or activate;
(5) Termination of all ongoing proceedings that contain information submitted by you or your employees, in particular the abandonment of all trademark applications that were submitted via MyUSPTO accounts that are registered with you or your employees, as the applications were obviously submitted for improper purposes were; and
(6) Continue to delete documents, remove information, deactivate accounts, and terminate procedures that contain submissions later submitted by you or your employees.

The deadline for Huanyee to reply is June 22, 2021. It is not yet known if Huanyee has replied, but in the meantime their website is down but their WeChat social media account is still active.

Huanyee presumably tried to avoid the cost of hiring a U.S. attorney in order to benefit from state incentives for trademark registrations, as previously reported by the USPTO. In fact, in April 2021, Huanyee stated on a social media account posting Shenzhen’s guidelines for brand subsidies of up to 3,000 RMB (~ USD 464) per brand. It is unclear whether applicants will have to repay the subsidies if the trademarks become invalid.

Due to the sheer number of trademark applications, which are listed in two columns on 107 single-line pages, this regulation has also received a lot of comment in Chinese social media postings (e.g. here and here).

The full text of the order can be found here.

© 2021 Schwegman, Lundberg & Woessner, PA All rights reserved.National Law Review, Volume XI, Number 172

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