80 links turned into dogs! A new method of trademark registration emerges

"I'm already at the police station," an Amazon seller told Yien.com one afternoon not long ago.

The cause of the incident was that the seller's trademark was preemptively registered, and the other party used it to blackmail him. In recent years, such incidents have occurred frequently, and recently someone broke the news that a large number of trademarks were preemptively registered across categories. In these incidents, criminals took advantage of the sellers' fear of delaying and affecting sales, and frequently committed crimes. Not only that, other sellers reported that a new preemptive registration method derived from trademarks has emerged, and someone has been complained about and had 80 links removed from the shelves .

A large number of trademarks were registered across categories and then complained about, with the largest brand having annual sales of 10 million US dollars

Before the publication, Yien.com contacted the seller again, "After paying the money, the other party withdrew the lawsuit." Although he finally compromised, he said that he still gets very angry every time he thinks of the incident.

Previously, the seller sent the blackmail email he received from the other party to Yinen.com. The entire email can only be described by two words: "arrogant" and "blatant".

At the beginning of the email, the other party expressed his purpose. If he wanted to resolve the matter, the seller needed to pay 6,000 yuan. He would pay 4,000 yuan first and then withdraw the lawsuit. Then he would pay another 2,000 yuan. He would remove the brand registration and the brand would also be cancelled by the U.S. Trademark Office.

During the communication with the seller, the other party stated that he was a social figure with connections in both the black and white sectors, and he knew the police, the procuratorate, and the discipline inspection commission. They were not allowed to help others to search for information privately, and he was a professional in this field, so the information had long been separated by several layers and could not be found on him.

He also grasped the seller's psychology and said that he would withdraw the lawsuit if he only asked for a few thousand yuan, not 100,000 yuan. If he insisted, the seller would be killed. Continuing the fight would only be disadvantageous to the seller. It would be better to spend a small amount of money to avoid disaster.

Brand squatting is not new, but it has been getting more and more serious recently.

Recently, a large number of Amazon sellers reported that they had been complained about cross-category trademark infringement and their links had been removed.

What is cross-category registration? For example, brand A was originally a clothing brand, but someone registered it in other categories such as medical or electronics.

Now it is equivalent to someone taking advantage of Amazon's policy of removing products from shelves upon complaint, and registering trademarks across a large number of categories. After the brands are removed, they return to complain about brand infringement in the original categories.

"They are very toxic. They usually pick the links with the best sales." A seller told Yien.com that he and three of his colleagues had encountered such complaints. The largest brand had annual sales of about 10 million US dollars.

The seller’s most popular link has a daily sales of $20,000. “The other party complained about our four ASINs for this link. After we contacted him, he withdrew the complaint.” He analyzed: “Now they are not very strong and will definitely kill you, so we don’t think it’s a prank by peers, but rather someone is using it to blackmail.”

He further said: "Now the other party has not explicitly asked for money. On the one hand, they may be afraid of leaving evidence. On the other hand, they are blatantly telling the seller that your lifeline is in my hands. I can destroy your link in a minute."

"So even though I haven't been blackmailed and haven't suffered any major losses, I just feel disgusted." The seller was helpless and angry.

In fact, sellers had reported the issue of trademarks being preemptively registered in other categories as early as early November. One seller said on a social media that their brand had been around for several years, but now someone suddenly registered it in other categories and they didn’t know what to do.

According to previous reports from peer media, some sellers have already suffered significant losses due to cross-category trademark registrations.

The trademark was maliciously registered as a domain name, and the seller's 80 links were complained and turned into dog

Just when sellers were getting angry at those criminals who maliciously registered trademarks and then blackmailed them , their new blackmail method emerged. This was derived from the trademark, but the cost of the crime was much lower than that of registering a trademark.

Not long ago, a seller contacted Yien.com and said that all of their 80 links had been complained about and turned into fake ones. The reason for the complaint was trademark infringement . "We are our own brand, a US Class 25 trademark, and the license was obtained in March last year, so I am confused by this reason."

At first, the seller thought he was being retaliated against by a competitor because they had previously filed a copyright complaint against a competitor for stealing their model photos. Amazon determined that the competitor had violated the rules and deleted the link.

But they soon found out that they had made a mistake. When the seller clicked on the contact information of the right holder at the end of the complaint email, a "Domain Name Transfer and Sale" page popped up . As shown below:

Click "Go to Buy" and the price is 8888 yuan. Then the seller continued to search through the Aliyun Mi Store called "Domain Transaction Service" and found that there were 15 pages with as many as 723 domain names for sale, and most of them were priced at three prices: 5555 yuan, 7777 yuan and 8888 yuan.

"Most of the domain names were registered recently. I randomly searched the names of some domain names on the first page and found that they were all brands on Amazon. " The seller said that it was not until then that they realized that criminals had registered domain names using their trademarks, which are brand names, and then filed trademark complaints and extorted money. "After our trademark was registered by them on November 27, they immediately came to our store to complain."

When the information was disclosed to Yien.com, 80% of the links of the seller's store had become unavailable. After repeated appeals, the links became unavailable again, and after repeated appeals, the seller was exhausted both physically and mentally.

"If you don't buy their domain name, you will be reported like crazy. Even if the link can be appealed, it will soon become a dead link again." The seller was helpless: "We are in the clothing business. There are many ASINs under one brand. He reported each one, and to appeal, we have to provide invoices and other supporting materials, which takes a lot of effort and time. They report a few more after the appeal is returned, and in the end it is futile."

The seller told Ennet that Amazon now accepts all infringement complaints without any review, and the links of the sellers complained against will be delisted. "They know this, so they keep disgusting you. Although 8,888 yuan is not a lot of money, if you pay it, it will be as uncomfortable as swallowing a fly."

"Although we have registered the trademark in the United States, its .com domain name is global and hard to defend against." The seller was very angry: "Nowadays, registering a domain name is very cheap, no matter which website you go to. It's only about 60 yuan for a year. It costs thousands of yuan to register a trademark and then extort money. Now they are using 60 yuan to extort 5,555 to 8,888 yuan. It's just too abominable."

Before publication, Ennet contacted the seller again. He said that all their links have been appealed. They had planned to sue the malicious reporter, and their lawyer was willing to take the case. However, they were not sure of winning because they would have to provide evidence if they wanted to sue. When we contacted Amazon, the customer service refused on the grounds of protecting the reporter's information. There was no information on Alibaba Cloud Mi Store except a QQ mailbox, so there was nothing we could do to them. " Now many sellers don't know that this domain name can be complained, so we want to expose them. On the one hand, we want to remind other sellers to be careful, and on the other hand, we want to rectify this behavior. "

China's surge in U.S. trademark applications raises concerns over malicious and fraudulent registrations

During the pandemic, economies around the world entered a state of "lockdown", however, trademark application activities increased dramatically.

On June 23, the U.S. Patent and Trademark Office (USPTO) published a blog post written by David Gooder, director of the Trademark Office, which mentioned that trademark applications from the United States and foreign countries have surged to unprecedented levels since last fall. As of June 17, the number of applicants increased by about 63% over last year, which means that the number of applicants increased by about 211,000. In December 2020 alone, the USPTO received 92,608 trademark applications, an increase of 172% from December 2019. The surge in trademark applications has created a backlog, extending the waiting time for first-time applications to an average of 5.2 months and the waiting time for final processing of applications to an average of 10.5 months.

An article in World Trademark Review ( WTR) also pointed out that 2020 was a record year for trademark applications at the USPTO. Compared with 2019, the annual growth rate was 35%, and a total of more than 636,000 US trademark applications were filed (the record set in 2019 was 470,000 applications). To this end, the USPTO also changed its fee schedule in 2021, increasing the fee for online filing applications from US$225 per class to US$250.

At the same time, it also pointed out that more than 27% of US trademark applications have been filed by Chinese interest groups since the beginning of 2020. Not only that, the above-mentioned peak in trademark applications in December 2020 was also mainly affected by Chinese activities.

In fact, the number of Chinese trademark applications in the United States has been increasing in recent years.

According to the US Patent and Trademark Office , the number of trademark applications from China surged 1,264% between 2013 and 2017, from less than 5,000 to more than 76,000. The number has been rising ever since. Barton Beebe, a professor of intellectual property law at New York University School of Law, said the USPTO received 171,000 trademark applications from China in 2020, equivalent to one in every four new applications.

The rapid growth in applications is inseparable from the help of cross-border e-commerce sellers, especially Amazon sellers. Cai Jingming (transliteration), an attorney at Tianhua Law Firm in San Jose, California , believes that the development of e-commerce companies such as Amazon is an important reason for the surge in Chinese trademark applications. He said: "As Sino-US trade increases, Amazon has become more and more important, and it requires merchants to register their brands."

According to a report by e-commerce analysis agency Marketplace Pulse, the proportion of Chinese sellers among Amazon's best-selling merchants increased from 11% in May 2016 to 42% by the end of 2020.

Merchants with registered trademarks are eligible to join the Amazon Brand Registry program, which provides more protection for their brands and makes their products more trustworthy to users.

However, as the number of trademark applications has soared, malicious and fraudulent registrations without the intention of use have also attracted attention.

According to the regulations of the U.S. Federal Trademark Registration Office, applicants must prove that the trademark has commercial use in the U.S. Bibe said that some trademark applications from China can be seen to have fraudulent and suspicious use information from the product sample pictures submitted, because there are traces of P images in the pictures , or the trademarks on the products in the pictures do not exist in the originals but are transplanted later.

He said that the United States is facing the problem of trademark resource exhaustion. Almost all English words have been registered as trademarks. Now even if you create a word or use any combination of letters as a trademark, it is possible that it has already been registered. He said that fraudulent trademark registrations from China have made this problem more serious and damaged the interests of legitimate companies and trademark holders in the United States and even China.

For sellers, the harm of this malicious and fraudulent registration phenomenon is also obvious.

For example, earlier this month, the US Patent and Trademark Office revoked more than 1,500 trademarks represented by a Shenzhen intellectual property agency on the grounds of suspected illegal applications, including multiple people using the application account, misappropriating US lawyer information, and forging lawyer signatures. At the time, many sellers said their trademarks were on the revoked list. They were real brands, and they paid the money, but in the end they received the word "revoked". It can be said that they were badly hurt.

In addition, as mentioned above, some criminals will maliciously register products in order to blackmail sellers.

EU trademarks are popular, and China has become the country with the largest number of registrations

An article in World Trademark Review ( WTR) states that in 2020, China became the number one country in terms of trademark applications in the European Union. In 2020, the European Union Intellectual Property Office (EUIPO) hit a record high of 147,045 trademark applications. While applications at the agency have been rising since 2016, the pace of growth accelerated sharply last year, with the number of applicants increasing by 14%, compared to an average annual growth rate of 8% from 2016 to 2019. This upward trend has continued into the first half of 2021. Data as of the end of April recorded a 36% increase, with 55,879 applications so far this year in July.

The article gives an answer to the source of these demands: most of them are contributed by Chinese merchants.

According to a report by the Spanish magazine The Economist, China submitted 28,755 trademark registration applications to the European Union Intellectual Property Office, headquartered in Alicante, Spain, last year . In just one year, the number of trademarks applied for by China in the EU increased by 88%, jumping from 9.5% of the total in 2019 to 16.3%. Not only that, a report published by the European Union Intellectual Property Office at the beginning of this year stated that the top ten applicants' EU trademark applications only accounted for 4.0% of the total EU trademark applications from China.

With a large number of registration applications, which trademarks are most popular among Chinese businesses?

The above-mentioned EU Intellectual Property Office report pointed out that between 2010 and 2019, among the EU trademark applications from China, the top categories of goods /services were Class 9 (electrical equipment and computers, accounting for 20.2%), Class 25 (clothing and footwear, accounting for 7.3%), Class 11 (lighting and HVAC equipment, accounting for 7.1%) and Class 35 (advertising and business management, accounting for 6.0%).

In addition, due to the impact of the epidemic in the new embassy, ​​the number of EU trademark applications related to Category 10 (medical devices and equipment) accepted by the European Union Intellectual Property Office in 2020 was also very large, with more than 25% coming from China.

According to statistics from the European Union Intellectual Property Office, the vast majority of EU trademark applications from China are submitted by small and medium-sized enterprises. As we all know, Europe is the main market for many Amazon sellers besides the United States, and the number of EU trademark registrations each year is also very large. EU trademarks are protected as community trademarks in all 27 EU countries (the UK has left the EU and is no longer protected), which means that sellers can register an EU trademark and use it on Amazon sites such as Germany, France, and Spain , which is a significant advantage.

There are two options for registering a European Union trademark: one is to submit an application to the European Union Intellectual Property Office ( EUIPO) , and the other is to extend the already registered Madrid trademark to the European Union. For European Union trademarks, you can basically apply through the fast track , and the trademark will be issued in about 3-4 months.

However, it is precisely because of the characteristics of the EU trademark that it is fast to obtain a certificate, easy to apply (only need to provide name, mailing address, nationality information), and low cost that it provides opportunities for criminals. Among developed countries, the EU has also become a region with a higher risk of trademark squatting. For example, on Amazon, you may encounter such a situation: when a seller opens a European site and sells products with good sales in the US site, he suddenly receives an infringement complaint, or finds that the trademark has been registered before listing. In this case, if you want to continue selling, you can only negotiate with the trademark holder for transfer, and at this time these criminals will ask for a high transfer fee.

Therefore, when sellers seek global protection for their trademark brands, the EU is one of the key regions that they need to consider.

In the previous article, we have mentioned so many cases of trademark preemption. Trademark preemption is also very harmful to Amazon sellers. So if a trademark is preempted, what methods can sellers use to solve it? Generally speaking, the response methods can be roughly divided into three types: leaving it alone, negotiating and resolutely cracking down. Leaving it alone, this "temporary" slackness, often leaves a big hidden danger. In the trademark application process, most countries have a third-party objection procedure. If the seller finds a preemptive registration, he can entrust an agency in the target country to raise an objection. If a trademark is preempted in the European Union, there are three major combat strategies: 1. Trademark objection; 2. Invalidation application for malicious preemptive registration of trademarks; 3. Invalidation application for trademarks that have not been used for five years. Because the method of combating confrontation is time-consuming and labor-intensive, and it costs a lot of money, and more importantly, it may miss sales opportunities, so negotiation and settlement are the more common methods adopted by sellers now. The blackmail of sellers after preemptive registration of trademarks by lawbreakers also seizes the seller's mentality.

It can be seen that the results of the three methods are not perfect, so Yien.com believes that the better way to deal with the problem of trademark squatting is for sellers to carry out trademark layout around the world. However, this method also has a loophole. During the period when the application is not rejected, criminals can use TM registration to blackmail.

Trademark registration