Another 40,000 trademarks were exposed! The service providers involved sent a "warning letter"

A document from the US Trademark Office has once again put the US trademark scandal at the forefront. The new directive has expanded the number of suspicious trademarks under the name of a Shenzhen intellectual property service provider (referred to as "M") from more than 10,000 to 53,000. The scope of trademark investigation has been dug deep into the past decade, when cross-border e-commerce was just starting out, and a large number of brands that have been registered for many years are on the verge of failure.

The latest news is that the service provider of the company involved, M, responded that the USPTO only asked for continued evidence regarding the previous trademark inquiry, rather than the rumored "sanctions and all the trademarks represented were revoked." The industry is not optimistic about the final ruling. M has negotiated a compensation plan with the seller and provided several trademark response methods.

Surprisingly, M pointed out that US standard registration has become a common problem in the trademark agency industry. For example, a large number of service providers used false proof of use and sales links when registering. He said that for peers who maliciously spread rumors, he would not rule out applying to the USPTO for a joint investigation. This warning may involve more institutions and sellers.

40,000 new trademarks were added , and the companies involved responded

Last year, Shenzhen M and several other trademark service providers went bankrupt. The United States Trademark Office (USPTO) sent a show-cause order, requiring M to provide a reasonable explanation for the relevant issues because of suspected violation of the rules and provision of false trademarks. The service provider responded, but the USPTO believed that the response was unconvincing and found that the latter was still engaging in unauthorized attorney practice.

Therefore, this week, the USPTO issued a new "Supplemental Explanation Order", requiring Company M to send an email to restate its explanation before December 11 this year, otherwise the latter will face penalties such as deletion or cancellation of all submitted trademark-related documents. In other words, among the extremely long suspicious list in the new document, 53,000 trademarks are likely to be invalidated.

This bomb exploded in the industry, and sellers were terrified. Many sellers on the list were even more confused. On the one hand, they were eager to confirm whether the trademark could be safely landed, and on the other hand, they were eager to find alternative measures, hoping to save the trademark or reduce the impact on Amazon's operations.

The incident quickly escalated. Last night, the company involved, M, issued a statement, saying that the supplementary order issued by the USPTO was just a routine inquiry, a supplementary explanation of its reply submitted in 2022 and its communication with the Trademark Office, requiring it to continue to provide written replies, arguments and evidence:

"Our company is currently undergoing normal review. There is no so-called sanction against our company by the US Intellectual Property Office. All related rumors are false."

However, people familiar with the matter revealed that Company M had already postponed the response requested by the USPTO twice, and the response request on December 11 was unavoidable.

What should the seller do if he is cheated? Get compensation, change lawyers and pray

Sellers whose trademarks are on the list can no longer sit still. How can they solve this crisis? W gave two methods:

1. If the registered trademark has been filed with Amazon, in order to avoid the application defects of the trademark itself, it is recommended to provide evidence of real use and apply for additional classification by a high-quality lawyer;

2. If the trademark that has been applied for but not certified has been actually used, please reapply with real evidence of commercial use and a high-quality lawyer.

But this is only theoretical. Among various solutions, some suggestions are to change the attorney, but the reality is that it is difficult for sellers to find a lawyer willing to take on the responsibility. "I asked more than a dozen service providers, but they all said they would not take the job." A seller was helpless.

This major incident is an earthquake-level accident. The editor learned that almost all lawyers who know the situation dare not take it because the incident is too serious and the Trademark Office has not yet made a formal ruling and has not yet determined the nature of the case. If a lawyer applies for the same brand again at this time, the Trademark Office may suspect that the company in question is transferring its brand. Is it worth it to get yourself into trouble just to take a few orders? This is obviously not worth it.

In terms of success rate, it is not clear whether these 53,000 trademarks have been marked by the Trademark Office. If they have been marked, even if the seller finds a lawyer, it may not be successful. Even if the operation is successful, the possibility of the relevant lawyers being held accountable cannot be ruled out. This is a vicious circle.

However, the situation is not hopeless. American lawyer Mike analyzed that even if Company M failed to provide a sufficient response, considering the large number of trademarks involved, the US Trademark Office would also consider the situation comprehensively, such as providing remedies for invalid trademarks. After the case is completed and the Trademark Office gives a qualitative assessment, the lawyers who are waiting on the sidelines can take action.

The trademark explosion had a huge impact on the sellers involved, and the sellers demanded compensation. The solution of M service provider was:

1. For successfully registered trademarks, the domestic service fee subsidy = the actual payment amount of the trademark order involved - the official fee amount. Assuming that the customer pays 2,388 yuan in US standard, the subsidized service fee is 2,388-250*7.1=613 yuan;

2. Full subsidy for service fees if the certificate is not issued. If the seller pays 2,388 yuan, then 2,388 yuan will be subsidized, but it can only be used to deduct service fees and cannot be used to deduct official fees and lawyer fees. There is not much sincerity here, and it is the same idea as the freight forwarder promising to use compensation to offset the freight after a problem occurs.

Will sellers buy into this? After all, many trademarks have been cultivated over the years and have become the company's storefront brands. Even if they are not the lucky cat, they have been registered with Amazon. Once there is a problem with the brand, it will affect a series of store functions. "53,000 trademarks are likely to be cancelled by the USPTO. M service provider is not kind. They did not comply with the regulations and took shortcuts to cause such a big mess, and now they want to just pay the service fee and leave it alone." A seller lamented.

Will the situation continue to escalate? Company M warns its peers or may apply for a merger

What’s interesting is that this trademark explosion incident has been trending in the industry, and some intellectual property service providers have also expressed their opinions. Service provider M directly drew the sword, saying that US trademark registration has become a common problem in the industry. “Our company is aware of and understands the lawyers in our field and their operating methods. If we encounter malicious rumors and misleading customers for marketing purposes, we do not rule out the possibility of applying for a joint investigation while communicating with the USPTO.” This move is really explosive.

This step is not only to turn oneself into the public enemy of the industry. If the M service provider really puts its peers on the table, then more trademarks will be implicated, and a large number of cross-border merchants will be dragged into the water. That will be a real industry earthquake. Simply put: Don't scold me, the whole industry is like this, let's die together!

Company M listed some illegal operations of service providers in the industry:

1. Violation of signature rules . The USPTO requires that all signature documents for trademark matters must be signed in person or the electronic signature must be entered by the designated signatory in person , but there are still a lot of proxy signing in the industry;

2. Violation of the use declaration rules. In the industry, most applications are based on use. The use evidence and sales links provided by the registered trademark must be truly used in business. However, from the past to now, a large number of trademark registrations have provided use evidence and temporary sales links made by service providers.

3. Rules for non-US practicing attorneys. Except for signature submission, domestic agents and staff are not allowed to provide any legal advice on trademark registration to trademark applicants. It must be provided by lawyers in person, but it cannot be completely circumvented in the industry.

In other words, not many people can stay out of this earthquake. If we look deeper, how many service providers and sellers can get away with it unscathed?

The sellers can only smile bitterly: " The trademark went bankrupt, the freight forwarder went bankrupt, the tax agent went bankrupt, anyway , we have to bear all the hardships . "