A spate of foreign fraudsters, particularly from China, have approached US trademark attorneys and offered to pay to use their information in filings, following the USPTO’s proposed requirement that foreign filers be represented by US counsel.
The USPTO’s notice of the proposal was published on February 15, seeking to introduce a requirement that foreign trademark applicants be represented by US attorneys. The notice details the office’s plan to increase public confidence in US trademark registrations and reduce clutter in the system.
As Managing IP reported, foreign pro se applications – in which applicants have not used a registered attorney – increased by 182% from 2015 to 2017, according to John Pegram, senior principal at Fish & Richardson in New York.
The proposed rule aims to cut down foreign pro se applications, but also offers the ability of foreign counsel to represent trademark applicants from their countries before the USPTO as long as their country extends reciprocal benefits to US lawyers.
Since the rule was published on February 15, many US trademark attorneys have received solicitations from Chinese entities, essentially seeking to defraud the USPTO. They ask how much they should pay in order to submit information with the US attorneys’ information: email, mailing address, etc.
Christian Liedtke, attorney at law at Acuminis in Costa Mesa, California, calls the activity a “direct reaction” to the USPTO’s proposed foreign counsel rule. He says it is “hardly surprising” considering that trademark filings by Chinese applicants increased by 275% at the USPTO between 2015 and 2017.
Many of these applications are questionable and use fraudulent specimens, according to Liedtke. “Part of the reason for this exponential increase in filings is that Chinese authorities apparently subsidise trademark applications abroad allowing applicants to yield net profits of as much as $1,000 per application.”
The USPTO published a bulletin on February 22, warning US trademark attorneys about the threat and including a threat of its own regarding the consequences of cooperating with foreign entities.
The bulletin states: “Agreeing to such arrangements would likely be aiding unauthorised practice of law and violating federal rules, including the USPTO Rules of Professional Conduct, 37 CFR Part 11. Attorneys who violate these rules may receive discipline, including exclusion or suspension from practice before the USPTO, reprimand, censure, or probation. Attorneys disciplined by the USPTO may also be reciprocally disciplined by their state bar.”
