USPTO probes flurry of ‘fake’ China TM filings using deceased attorney’s name
IP agencies filed applications in attorney’s name days after his death | Fictitious name also used is similar to living attorney in Illinois | False specimens of use submitted to “circumvent” USPTO rules.
A group of Chinese companies has registered hundreds—if not potentially thousands—of trademark registrations under the name of a deceased US attorney, as well as using a fictitious attorney’s name for further filings.
The US Patent and Trademark Office ( USPTO) published a Show Cause Order last week, dated Thursday, August 25, addressing the legal representatives of four related business and IP agencies: Shenzhen Haiyi Enterprise Management, Haiyi Enterprise Service (Shenzhen), Haiyi, and Haiyi Group.
More than 300 trademark applications were filed with the USPTO in the name of US attorney Jeffrey Firestone since August 2, 2021, despite Firestone having died just days before. Respondents’ email addresses appeared in at least 500 trademark application and registration records where Firestone is (or was) identified as the attorney, according to the USPTO.
Firestone was an active trademark attorney whose name was linked to more than 8,000 US trademark applications—7,000 of which were filed for applicants from China in 2020, placing him among the “Top Filer” list for that year. Whether Firestone was involved in filing these applications or if the fraud predates his death remains unclear.
The names and email addresses of the respondents, including three individuals who either work for, operate, or direct legal consulting and intellectual property businesses in China, were used on the applications in question, said the USPTO. The three individuals are named as Chen Huanyong, Liu Chunyu, and Huang Wenhai.
More than 2,000 trademark applications were filed using USPTO.gov accounts registered to and/or used by the respondents. They also filed more than 600 amendments and other responsive documents in trademark application records, even though none of the respondents are US-licensed attorneys or authorised to make submissions on behalf of others in trademark matters.
Fictitious attorney
The respondents were found to be linked to one or more USPTO.gov accounts used to submit documents that included the electronic signature of attorney Jeffrey Firestone, including filings signed and submitted after his death, and/or the signature of “Jackson George,” a presumed fictitious attorney.
This was “an apparent attempt to obfuscate [the respondents’] involvement”, said the USPTO adding that the made-up name was identified in more than 2,500 trademark applications and registrations, most of which indicate that “Jackson George” is licensed to practice law in Illinois.
The Attorney Registration and Disciplinary Commission ( ARDC), based in Illinois, identified just one living attorney who is authorised to practice law, whose name is similar to “Jackson George”—George Jackson III.
The real George Jackson confirmed in an email to the USPTO that he “never practised in the [trademark] arena” and that the applications and registrations made by “Jackson George” do not “stem from [his] practice or [him] in any fashion whatsoever.”
The respondents are also accused of submitting false specimens of use in trademark records, which “appear to have been created for the purpose of circumventing” USPTO rules. The specimens in question “depict goods allegedly for sale on e-commerce websites, with accompanying invoices that contain false, fictitious or fraudulent information”.
The Office stated the legal requirement that, for trademark matters, foreign-domiciled applicants, registrants, and other parties to proceedings before the USPTO must be represented by a US-licensed attorney.
“Despite this requirement, available evidence indicates that respondents assisted applicants and registrants with circumventing the USPTO rules…” alleged the USPTO.
“Fraud at the USPTO has reached a new level,” wrote Robert Reading—director of the IP Group at data company Clarivate—after the news broke.
The accused parties must provide a written response to the USPTO by 5pm (EST) on September 8, 2022. The Show Cause Order was signed by Amy Cotton, deputy commissioner for trademark examination policy.
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