A recent enforcement action by the United States Patent and Trademark Office (USPTO) has sent shockwaves through the cross-border e-commerce community. Just before the Mid-Autumn Festival, the USPTO issued a staggering 600-page trademark exclusion order targeting a service provider accused of multiple violations in trademark examination and application processes. The order affects over 10,100 trademark applications and registrations, putting thousands of US trademarks at risk of cancellation and potentially causing significant financial losses and brand crises for affected sellers.
Root Causes: Violations That Sparked a Trust Crisis
The USPTO's allegations focus on several critical violations:
- Lack of Qualifications: The service provider allegedly operated without proper legal authorization to conduct US trademark examination and application services.
- Impersonation of Attorneys: To conceal their lack of qualifications, the provider reportedly impersonated at least three licensed US attorneys by using their names for review and signature purposes.
- Account Sharing Violations: Over 10,100 documents showed evidence of multiple individuals sharing the same USPTO account, a clear violation of USPTO regulations.
These violations not only undermine the USPTO's authority but also jeopardize the interests of sellers who relied on this service provider for trademark registration. If the USPTO's final decision is unfavorable, these trademarks face potential cancellation.
Warning Signs: Lessons from the Huanyi Trademark Cancellation
The current situation echoes the Huanyi case from six months ago, where 15,000 trademarks were cancelled. Despite promises to re-register trademarks or provide compensation, Huanyi failed to fully deliver, leaving sellers with significant losses. More concerning, re-registering trademarks may lead to Amazon filing rejections, brand abuse allegations, and potential account or brand flags by Amazon.
Damage Control: Immediate Actions for Affected Sellers
Sellers impacted by the current crisis must take proactive measures to protect their interests:
- Monitor USPTO Updates: Closely follow USPTO announcements before September 21 to stay informed about case developments.
- Re-file Trademarks: Before the USPTO's final ruling, immediately work with a reputable, qualified institution (preferably a physical law firm) to re-file trademarks with unproblematic attorney records.
- Voluntarily Remove Amazon Brand Registry: Consider proactively removing brand registry listings on Amazon and implementing inventory transfers or relabeling.
- Evaluate Service Provider Solutions: If the implicated service provider offers to re-file applications, carefully assess their capacity to properly handle each case given their current workload.
- Change Service Providers: Even if your trademarks aren't currently affected, consider switching from any provider with compromised credibility.
- Monitor Trademark Status: For previously registered trademarks, update agent information and mailing addresses while closely tracking electronic records in TSDR for cancellation risks.
Preventive Measures: Compliance Essentials for US Trademark Registration
To avoid similar crises, cross-border e-commerce sellers must adhere to these compliance principles:
- Genuine Use Principle: Avoid fabricating evidence of use for trademarks not yet active in the US market.
- Document Retention: Maintain comprehensive records of all application communications and usage evidence across all listed goods/services.
- Accurate Use Dates: Provide truthful first-use dates in applications, as these become critical in potential disputes.
- Clear Use Classification: Distinguish between "actual use" and "intent-to-use" applications to prevent complications.
- Ongoing Maintenance: Track trademark status post-registration and meet all filing deadlines, particularly the 5-6 year use declaration requirement.
- Prudent Provider Selection: Avoid prioritizing low costs over quality when selecting agents, and verify their case volume, documentation quality, and compliance history.
As USPTO monitoring and enforcement intensify, trademark compliance has become a critical consideration for cross-border e-commerce sellers. The future promises stricter oversight and harsher penalties. In the realm of international intellectual property, there are no shortcuts—compliance and quality remain paramount. Only through partnerships with legitimate, professional service providers and strict adherence to legal requirements can brands ensure healthy development in overseas markets.