On October 11 at 5 PM Pacific, I will be moderating a discussion with Michael Mangelson and Jennifer Chicoski from USPTO and Ren Haiyan from the Wanhuida law firm on “USPTO’s Battle Against Fraudulent Trademark Filings from China: Origins, Strategies, and Ethics.” The program is free of charge and CLE as well as ethics credits will be made available. The first sixty minutes will be a discussion and the last thirty minutes will consist of Q & A. The program should appeal to Chinese companies and law firms engaged in filing trademarks in the United States, United States attorneys admitted to the PTO, and lawyers and academics who are interested in cross-border legal ethics issues.
Registration is available here. The show-cause orders, final orders imposing sanctions, and orders suspending USPTO.gov accounts issued by the Commissioner for Trademarks are here. USPTO disciplinary actions against patent and trademark practitioners may be searched here. Our estimates based on the cases posted by the Commissioner for Trademarks is that there were 561 cases involving Chinese parties from 2012 to 2022 alone. In the latest version of the problem, non-existent, dead, or unwilling US lawyers are being named as representatives, or compliant US lawyers are using their office to file for TM’s without engaging in any active due diligence or supervision. USPTO orders to show cause suggest that thousands of trademark applications may have been affected.
We expect to hear more from USPTO about the changing nature of these fraudulent practices and the types of sanctions being undertaken. We will also hear from Ren Haiyan about China’s reactions to these sanctions. We will also talk about reciprocal disciplinary actions by state bars or by CNIPA in China.
These cases likely constitute the largest cross-border disciplinary program undertaken by a US disciplinary authority. It is, however, difficult to estimate the extent of non-USPTO cross-border disciplinary actions due to a relative lack of transparency by many state bar authorities. Nonetheless, based on surveys that we have been undertaking, state bars (for a variety of reasons) also rarely conduct investigations when the activities of concern occurred overseas, and have left investigation of these offenses primarily to overseas authorities.
Please join us for what promises to be a fascinating discussion!
Note: post updated to reflect October 11, 2022 date for webinar.
Categories: ethics, good faith, Trademark, USPTO
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