The USPTO knows if you file too many applications

LAWYER SUSPENDED FROM PRACTICE BEFORE USPTO FOR FILING TOO MANY TRADEMARK APPLICATIONS

Earlier this year, the United States Patent and Trademark Office (“USPTO”) imposed the ban on a practicing New York attorney for filing an embarrassing number of trademark applications in a short time. of time.

BACKLOG AT USPTO MAY BE FROM ZHANG FILING TOO MUCH TRADEMARK APPLICATIONS

Respondent Weibo Zhang of New York was suspended from practice before the USPTO for at least ninety (90) days after discovering that he had filed over 18,000 trademark applications with the USPTO between 2020 and 2021. Listed as counsel of record, the defendant filed approximately 8,500 claims in 2020 and 9,800 in 2021. 3,000 of the 2020 claims were filed in December 2020, with more than 350 claims filed on 31 December 2020 only.

Apparently, the Respondent was hired to work with a number of different agents who, in turn, represented different foreign entities seeking to file trademark applications in the United States. Agents would forward pre-populated requests to the responder, who in turn would configure desktop actions to be sent directly to agents. Officers would then consult with claimants on whether responses should be filed. If responses were to be filed, the officers would draft them themselves and then send them to the defendant to be filed.

TRADEMARK APPLICATIONS MUST RECEIVE PROPER CONSIDERATION AND REPRESENTATION BY REGISTERED ATTORNEYS

Due to the sheer volume of applications filed, the USPTO determined that there was no way for the defendant to thoroughly review trademark applications before filing, as required by the USPTO. The USPTO also concluded that the defendant would not have been able to truly determine whether the specimens submitted were true and authentic, nor would the defendant have been able to determine whether the specimens as submitted showed the markings used in the trade.

Further, while cooperating with the investigation, the Respondent also admitted that he allowed an agent to sign his name as counsel of record for forty-nine (49) of the trademark applications, which means that these applications were filed without the respondent having ever examined the applications.

The USPTO found the respondent guilty of multiple rule violations. They included, for example: failure to provide competent representation to and consultation with clients; failing to keep clients reasonably informed of the progress of a matter; assist in the unauthorized exercise of law; engaging in dishonest conduct; and knowingly making a false statement of fact to a court. It is estimated that the Respondent earned close to $750,000 for this trick. A petition must be filed for the defendant to be reinstated in practice before the USPTO.

KEY POINTS ON FILING TOO MUCH TRADEMARK APPLICATIONS

A New York attorney has filed over 18,000 trademark applications without proper review or representation. The USPTO suspended the attorney, stating:

  • The attorney did not properly examine the specimens submitted;

  • Counsel failed to provide competent representation; and

  • The lawyer contributed to the unauthorized practice of law.

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