The USPTO Knows If You File Too Many Applications

Attorney Suspended From Practice Before the USPTO for Filing Too Many Trademark Applications

The United States Patent and Trademark Office (“USPTO”) brought down the ban hammer on a practicing New York attorney earlier this year for filing an embarrassingly high amount of trademark applications in a short duration of time.

Backlog at USPTO Could Be From Zhang’s Filing of Too Many Trademark Applications

Respondent Weibo Zhang of New York was suspended from practice before the USPTO for at least ninety (90) days after it was discovered that he had filed over 18,000 trademark applications before the USPTO between 2020-2021. Listed as Attorney of Record, Respondent filed approximately 8,500 applications in 2020 and 9,800 in 2021. 3000 of the 2020 applications were filed in December 2020, with over 350 applications filed on December 31, 2020 alone.

Apparently, Respondent was engaged to work with a number of different agents that, in turn, represented different foreign entities looking to file U.S. trademark applications. The agents would push pre-filled out applications to Respondent, who in turn, would set up Office Actions to be sent directly to the agents. Agents would then consult with applicants regarding whether responses should be filed. If responses were to be filed, the agents would draft it themselves and then send them to Respondent to be filed.

Trademark Applications Should Receive Proper Review & Representation by Attorneys of Record 

Due to the sheer amount of applications filed, the USPTO ruled that there was no way that Respondent thoroughly reviewed the trademark applications prior to filing as required by the USPTO. The USPTO similarly found Respondent would have been unable to truly determine whether the specimens submitted were true and authentic nor would Respondent have been able to determine whether the specimens as submitted showed the marks as used in commerce.

Further, while cooperating with the investigation, Respondent also admitted he had allowed an agent to sign his name as Attorney of Record to forty-nine (49) of the trademark applications, which meant these applications were filed without Respondent ever reviewing the applications.

The USPTO found Respondent guilty of multiple violations of the rules. They included, for example: failing to provide competent representation to clients and consult with them; failing to keep clients reasonably informed about the status of a matter; assisting in the unauthorized practice of law; engaging in dishonest conduct; and knowingly making a false statement of fact to a tribunal. It is estimated that Respondent made close to $750,000 for the ruse. A petition must be filed for Respondent to be reinstated to practice before the USPTO.

Key Takeaways on Filing Too Many Trademark Applications

A New York attorney filed over 18,000 trademark applications without proper review and representation. The USPTO suspended the attorney, holding:

  • The attorney failed to properly review the specimens submitted;

  • The attorney failed to provide competent representation; and

  • The attorney assisted in the unauthorized practice of law.

For more information about trademarks, see our Trademark Services and Industry Focused Legal Solutions pages.

Blog, Law, TrademarksCeles Keene