USPTO Sanctions Chinese Law Firm and More Than 15,000 US Trademark Cases Were Terminated

On 10th December 2021, the U.S. Patent and Trademark Office (“USPTO”) has issued a final order for sanctions against Shenzhen Huanyee Intellectual Property Co., Ltd. and Ms. Yusha Zhang, Huanyee’s Executive Director for filing more than 15,000 trademark applications which included “false and fraudulent submissions”.

When filing trademark applications in the U.S. as a foreigner, the applicant, registrant, or party must be represented by a U.S.-licensed attorney, who is licensed to practice law in the U.S. at the USPTO. However, Ms. Yusha Zhang is not a U.S.-licensed attorney, nor does Huanyee have any U.S.-licensed attorneys on staff who supervise Respondents work, and at the same time providing false, fictitious, or fraudulent domicile or attorney information in a trademark submission to the USPTO. These results in USPTO sanctions including terminating the 15,000+ fraudulently filed applications filed through uspto.gov account registered to or controlled by Ms. Yusha Zhang or any officer, employee or agent of Huanyee as well as banning them from further correspondence or submissions.

Proof of Use

It is required to submit proof of use when filing a trademark application at USPTO. When filing a U.S. application based on intention to use or use in commerce, the applicant is required to submit evidence of use at the point of filing to certify that the mark is in use and must be submitted before the end of the registration process. Meanwhile, the applicant can also file the application base on corresponding home application, which is not necessary to submit evidence of use at this point, but a declaration of intent to use the mark.

After the mark is successfully registered, the owner must file a Declaration of Actual Use (“DAU”) between the 5th and 6th year of registration, and between the 9th and 10th year of each registration, containing proof of use of the mark in the U.S. market.

To Meet the USPTO’s requirements

When filing DAU, the trademark owner must demonstrate how their mark is used in commerce. The evidence must (1) representing the mark as registered and (2) show the mark in use with the designated goods and/or services.

The following provides an overview of the acceptable evidence of use and those that are not:
Examples of acceptable evidence:

• labels;
• photo of the product;
• packaging of the product showing the trademark;
• extract from a catalogue; and
• screenshot of webpages where the products are sold

Examples of refused evidence:

• a computer-modified image or photo;
• an artistic representation;
• a mockup of a website or advertisement;
• only the website address; and
• a screenshot of a website that does not provide sufficiently precise and complete information on the services.

See also:
USA Trademark Registration Costs and Procedures