June 03, 2021

WTR Quotes Andrew Price on USPTO Disciplinary Action over China-Based Trademark Scheme

2 min

On June 3, 2021, Andrew Price was quoted in World Trademark Review (WTR) on disciplinary action issued by the United States Patent and Trademark Office’s (USPTO) Office of Enrollment and Discipline (OED) involving a China-based trademark scheme. The action was against Yiheng Lou, a U.S.-registered attorney working out of Beijing with Mainleaf Law Group, who reportedly had a business relationship with an entity named Shenzhen Dingji Intellectual Property Company that helps clients in China file domestic and global trademark applications.

According to the article, the relationship involved a service agreement that set forth a tiered compensation arrangement in which Dingji agreed to pay Mainleaf a fee for U.S. trademark applications that Lou filed. The agreement stated that Dingji paid $20 per application (when it exceeded more than 100 applications per month), with some months involving Dingji filing “up to 500 trademark applications,” which would generate more than $10,000 a month. However, the USPTO found that Lou did not have direct contact with the trademark applicants that filed through Dingji.

The USPTO found that Lou was listed as attorney of record on thousands of trademark applications, but the lack of contact meant that the applicants were not advised on important issues regarding their trademark applications, such as what constitutes a proper specimen. Furthermore, as Lou “did not personally enter his electronic signature on the trademark applications or attendant declarations,” suggesting that because of the above volume they were not properly reviewed.

With thousands of trademark applications impacted by Lou’s actions, the OED ordered that he be suspended from practice before the USPTO for three months, and then henceforth serve a 21-month probationary period, including six hours of CLE training.

Talking to WTR, Price said the punishment was a “surprise,” adding: “Three months sounds like a slap on the wrist for a scheme like this, but presumably the trademark office showed leniency based on the promise of help with other investigations. On the face of it, though, a three-month suspension may not create significant deterrent value.” More concerning, says Price, is that there are almost certainly “copycat” operations.

Click here to access the article.