USPTO Cracks Down on Fraudulent Filers

The United States Patent and Trademark Office (USPTO) is fighting a battle against fraudulent trademark filers, and while at times it may seem like trying to hold back the tide, they are cracking down on some of the more egregious offenders.

The problem is that in less than a decade, trademark applications have increased astronomically from 6,323 trademark applications in 2014 to more than 175,000 filed in 2021. Most of the increase in filings can be tracked to fraudulent filings from entities in foreign nations, like Russia, Pakistan and particularly China, whose applications have grown by more than 2,700 percent since 2014. 

In mid-December, the USPTO issued a Show Cause Order against Asin Enterprise Management Consulting Ltd. Co. and its officers, employees and agents. Asin, by its own description, is a Chinese intellectual property company that files U.S. trademark applications for Chinese clients. That description alone is not proof of any illegitimate conduct by Asin, but the USPTO accuses Asin of “engaging in the unauthorized practice of law and providing false information in trademark submissions.”

Specifically, the USPTO states that Asin repeatedly and falsely entered electronic signatures in the name of a North Carolina attorney in trademark filings after the contractual relationship between the parties had lapsed. Subsequently, Asin also filed fraudulent trademark applications using the name of another attorney that they hired, including filing an incredible 18 applications in the space of 10 minutes’ time before 5:00 a.m. on April 30, 2021. When confronted with the false applications, these attorneys have worked with USPTO to identify the false applications.

Asin also is accused of submitting false specimens of use for their applications. Specimens of use are photos or digital evidence of trademarks being used to promote a good or service and must be included in any trademark application. Fraudulent filers routinely will create photos of products as a specimen of use to include in their application that do not depict the actual product and, if examined closely, often have obvious doctored trademarks. Additionally, Asin is accused of submitting improperly signed and false materials and violating the terms of use for USPTO websites. 

As part of the order, the USPTO is requiring Asin to respond by January 10 or they will be permanently banned from submitting trademark related documents in the future, all current applications and documents submitted by Asin will be given no weight and terminated, as well as all financial transactions connected to these filings.

While this is only one step, it is a step to protect legitimate filers from unnecessary delays in their own applications being processed due to the USPTO being bogged down by a tidal wave of fraudulent applications. It also protects legitimate businesses from having their trademarks improperly used by an entity that is trying to game the system.

Shorter Deadline to Respond to Trademark Applications

If you are interested in applying for a trademark for your company, you should be aware that the USPTO recently shortened the deadline to respond to actions or questions the office issues on trademark applications to three months from its current six-month window. 

The intent of this shorter response time is to decrease the time that applicants spend waiting for their trademark application to be granted. This action, which went into effect on December 3, 2022, only applies to applications filed after that date. A three-month extension can be requested, but the request for more time needs to be submitted before the three-month window expires.

Failure to respond within the three-month window will mean that the application will be considered to be abandoned, which will require a new application and applicable fees be started to register a trademark.

If you have any questions or concerns about filing a trademark registration, an IP attorney at Ference and Associates, LLC, will be happy to speak with you. Please visit www.ferencelaw.com or call (412) 741-8400.