In a Final Order (Proceeding No. D2022-16) released July 12, 2022, a New York attorney was suspended from practice for filing approximately 18,300 U.S. trademark applications for Chinese agents without proper review. Specifically, “due to the volume of applications he filed, Respondent did not always conduct a sufficiently thorough review of trademark applications prior to filing, including, for example, not performing an inquiry reasonable under the circumstances to determine whether the specimens showed the marks as used in commerce or failing to review specimens to determine that they were authentic (e.g., not mockups or digitally altered). ” These voluminous questionable filings from China might be one of the reasons for the slowdown in the USPTO examining trademark applications.
Respondent was named attorney of record for approximately 8,500 applications filed in 2020 and 9,800 applications filed in 2021. Respondent reviewed, signed, and filed ove1· 3,000 applications in December 2020, including over 350 applications in a single day: December 31, 2020.
Additionally, Respondent acknowledged that he allowed an Agent to sign his name to 49 trademark applications and appurtenant declarations and to file those applications with the USPTO without his reviewing the applications prior to filing. The applications were filed with the USPTO on a single day.
Respondent listed that the Chinese agents he filed for included Lin Zhang, Xing Don, Jing Liu, Jiaqi Wang, Linzhi Xiang, Ju Xiao Yan, Si Li, Xinguang Zhang, Lang Wan, Xinyi International IP, Shenzhen Yaotianxia IP, Shenzhen Ruilixin IP, Shenzhen Sellergrowth Network, Beijing Haoke International Intellectual Agent, Shenzhen Kuazintong Consulting Service, Mingri Intellectual Property Shenzhen Co., and Shenzhen Kuashiji Intellectual Property Co.
Regarding Office Actions issued in trademark applications where Respondent was the attorney of record, Respondent established a system whereby the relevant Agent received Office Actions via email directly from the USPTO. Respondent then relied on the Agents to communicate with applicants about the Office Actions. Respondent did not take sufficient steps to confirm that the Agents received the emails or that the Agents informed the applicants about the Office Actions. Respondent did not take action on behalf of applicants with respect to Office Actions unless he received a draft response from an Agent. Respondent interpreted silence from an Agent with respect to an Office Action as the applicant’s intention not to respond.
Accordingly, the USPTO found that the respondent violated violated the following provisions of the USPTO Rules of Professional Conduct:
a. failing to provide competent representation to clients;
b. failing to provide competent representation to clients;
c. failing to reasonably consult with the client about the means by which the client’s objectives are to be accomplished;
d. failing to keep clients reasonably informed about the status of a matter;
e. failing to explain matters to the extent reasonably necessary to permit clients to make informed decisions regarding the representation;
f. knowingly making a false statement of fact to a tribunal or failing to correct in a timely manner a false statement of material fact made to the tribunal by the practitioner;
g. failing to make reasonable efforts to ensure that Respondent’s office has in effect measures giving reasonable assurance that the conduct of non-practitioner assistants is compatible with the professional obligations of the practitioner;
h. assisting in the unauthorized practice of law;
i. engaging in conduct involving dishonesty; and
j. engaging in conduct that is prejudicial to the administration of justice.
For this, he was suspended from practice for 90 days. As he was earning $40-$60 per application filing, he earned at least $732,000 in 2 years. No word yet whether China will punish the agents listed in the decision.
A redacted copy of the decision is available here.