Big news! More than 53,000 US trademarks may be invalidated, and another service provider went bankrupt

Black Friday and Cyber ​​Monday have just come to an end. While some sellers are still immersed in the joy of improved sales on Cyber ​​Monday, and other sellers have not yet been able to break free from the worries of poor sales during the peak season, another storm has quickly hit the cross-border circle.

👇Attached is the trademark search tool

It is learned that on November 27, local time in the United States, the United States Patent and Trademark Office (USPTO) issued a 1,319- page "Supplemental Explanation Order", the content of which shows that a Shenzhen intellectual property service provider is suspected of violating relevant management regulations of the United States Trademark Office, and more than 53,000 of its registered US trademarks may be cancelled.

▲ Image from USPTO

It is understood that on September 7, 2022, the USPTO issued a "Show Cause Order" to the service provider because it violated the rules of the United States Patent and Trademark Office and was suspected of providing false trademarks .

On November 2, 2022, the service provider promptly submitted a response to the Show Cause Order, but the USPTO pointed out in its latest investigation order that the response was unconvincing and failed to explain the seriousness of its misconduct . The evidence it received about the service provider’s activities showed that the company in question was still engaging in unauthorized attorney practice before the Trademark Office and providing false or fictitious information in trademark application submissions, further violating USPTO rules and USPTo.gov Terms of Use.

Accordingly, the USPTO issued the latest supplementary statement of reasons order, requiring the service provider to send an email to re-explain before December 11, 2023 , otherwise it will face penalties including but not limited to the following:

• Permanently prohibit the respondent from submitting trademark-related documents on behalf of the respondent or others;
• Delete or cancel all trademark-related documents submitted by the respondent;
• Delete communications related to the respondent from the USPTO's database of all applications or registrations;
• Direct the USPTO Office of the Chief Information Officer to permanently deactivate any USPTO account containing contact information related to the Respondent and to take all reasonable steps to prevent the Respondent from creating or activating additional accounts;
• Block future financial transactions on credit cards used to pay filing fees related to improper filings or to the Respondent;

• Terminate all ongoing proceedings that contain respondent submissions.

It is worth noting that in the investigation order, the US Trademark Office listed all US trademarks registered by the service provider from January 2014 to January 2023, totaling more than 53,000 . That is to say, if the service provider's final response fails to satisfy the US Trademark Office, then these trademarks are likely to be removed completely.

The following is a list of some of the trademarks mentioned in the announcement that may be affected:

▲ The picture comes from the seller’s disclosure

In response to this thunderstorm, a trademark search tool was developed to help sellers quickly check whether there are any abnormalities in their trademarks. The operation process is as follows:

Compared with other previous bankruptcy incidents, the scale of this one is much larger. In addition, the service provider is well-known in the industry and has a wide impact. Therefore, this news swept the cross-border circle shortly after it was announced.

It is understood that as early as September 2022, shortly after the USPTO issued the first "Show Cause Order", the service provider made a statement on this, saying that it was accepting inquiries from the US Intellectual Property Office normally, and was not subject to sanctions, and that it would not affect customers.

▲ The picture comes from the seller’s disclosure

However, the relevant service providers have not yet responded to this "Supplementary Statement of Reasons Order".

Some industry insiders believe that the USPTO has not yet issued relevant sanctions documents, but according to the "Supplemental Statement of Reasons Order", the service provider has repeatedly engaged in unauthorized lawyer practice activities in the Trademark Office, and the reasons provided are not convincing enough. It is only a matter of time before the trademark has problems and is removed.

▲ The picture comes from the seller communication group

Some sellers also said that the revocation of the trademark is only the first step. Subsequent related accounts and stores may also be marked by e-commerce platforms such as Amazon, which will lead to a series of problems such as difficulty in brand registration.

Therefore, for cross-border sellers, the most important concern at the moment is how to avoid trademark scandals that may affect their stores.

In this regard, a senior seller pointed out that based on previous experience with trademark failures, the trademark registration will not be removed during the time the service provider responds (before December 11). The relevant sellers can take this opportunity to provide real evidence of use, re-register a trademark with the same name, and then cancel the registration of the old trademark when the opportunity arises, making a parallel replacement.

However, some sellers believe that Amazon may not recognize this operation, and the safest way is to re-register a new account and then register the brand.

As of press time, there has been no new development on this incident and the final direction of development has not yet been determined. We will continue to pay attention to subsequent developments so that we can inform all sellers in a timely manner.

▲ Scan the QR code and reply [Trademark Protection] to join the group discussion

It is worth noting that some industry insiders pointed out that perhaps because of the surge in trademark applications in the United States in recent years, the USPTO is strengthening its supervision of agencies, so the possibility of related service providers going bankrupt will also greatly increase.

Here, we would also like to remind all sellers that you can refer to the following suggestions when applying for overseas trademarks:

Finally, if you have any latest news about the above events, you can also join the group or discuss in the comment area~