March 1, 2019

Beware of Suspicious Trademark Solicitations

Holland & Knight Alert
Thomas W. Brooke

Over the past few years, the U.S. Patent and Trademark Office (USPTO) has experienced an uptick in filings of trademark applications from entities outside the United States, especially from China, that do not appear to have a bona fide intent to use the marks in U.S. commerce. These filings appear to be an orchestrated attempt to warehouse trademarks, often discovered on social media, so as to be able to sell them off to third parties that may actually wish to use them. This form of "trademark squatting" bears similarities to the practice of hording domain names and selling them back to the rightful owners.

As a result, the USPTO promulgated new regulations that apply to trademark applicants, registrants and parties who have a permanent legal residence or a principal place of business outside the United States. The proposed changes would require these applicants, registrants and parties to hire an attorney who is licensed to practice law in the United States to represent them at the USPTO.

Shortly after the proposed rules were published on Feb. 15, 2019, the USPTO reported that U.S. attorneys began receiving emails from operations in China and perhaps elsewhere, offering to pay to use the lawyers' information in trademark filings. These solicitations appear to be an attempt to circumvent the proposed rules regarding U.S. counsel for foreign counsel.

U.S. attorneys who agree to provide information to foreign law firms would likely be aiding unauthorized practice of law and violating federal rules, including the USPTO Rules of Professional Conduct, 37 C.F.R. Part 11. Attorneys who violate these rules may receive discipline (including exclusion or suspension from practice before the USPTO), reprimand, censure or probation. Attorneys disciplined by the USPTO may also be reciprocally disciplined by their state bars.

Trademark owners around the world often receive official-looking email messages and letters from entities with official-sounding names or from internet domain name registries based in China, Hong Kong, Taiwan and elsewhere urging owners to renew their trademarks, file trademarks in foreign countries, subscribe to a watch service or purchase unwanted and most likely useless domain name registrations. These solicitations include offers to monitor trademarks or even have the trademarks published in a vanity publication that goes to no one. The communications often come in the form of an "invoice" that looks as though it requires payment. This most recent effort appears to be more of the same.

Next Steps

The USPTO would like to know about these solicitations. Trademark owners that receive offers to record or renew trademarks, or lawyers who receive solicitations asking to use their information, should forward them to

Entities that develop new names, logos and slogans should file to protect them at the USPTO sooner rather than later, working through a reputable U.S. law firm, including the lawyers with Holland & Knight's Intellectual Property Group, so as to avoid having to deal with an enterprising trademark squatter who sees the idea and files first.

Information contained in this alert is for the general education and knowledge of our readers. It is not designed to be, and should not be used as, the sole source of information when analyzing and resolving a legal problem. Moreover, the laws of each jurisdiction are different and are constantly changing. If you have specific questions regarding a particular fact situation, we urge you to consult competent legal counsel.

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