December 7, 2022

Volume XII, Number 341

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USPTO: Chinese Firms Used Dead Attorney to Submit U.S. Trademark Application Filings

In a Show Cause Order dated August 25, 2022, the USPTO stated it has reason to believe that Shenzhen Haiyi Enterprise Management Co., Ltd. et al. “have provided false, fictitious or fraudulent information in thousands of trademark application and registration records.” Specifically, “Respondents have registered for, control, and/or operate one or more USPTO.gov accounts responsible for submitting documents that included (1) the electronic signature of attorney Jeffrey Firestone, including filings signed and submitted after his death, and/or (2) the signature of “Jackson George,” a presumed fictitious attorney."

Per the USPTO,

Jeffrey Stewart Firestone is or was identified as an attorney of record in over 8,000 trademark applications and/or registrations. Despite news articles reporting Mr. Firestone’s death on July 30 or 31, 2021, more than 300 submissions, allegedly signed by Mr. Firestone, have been filed with the USPTO since August 2, 2021.

Respondents’ email addresses appear in at least 500 trademark application and registration records where Jeffrey Firestone is (or was) identified as the attorney of record. Moreover, one of the USPTO.gov accounts registered to Respondents submitted four Responses to Office Actions allegedly signed directly within the individual electronic TEAS form by Mr. Firestone after his death.  Each of these submissions contains false, fictitious, and/or fraudulent information.

Of particular note, Application Serial No. 90209151 contains alleged “proof” of Mr. Firestone’s standing with the Illinois Attorney Registration & Disciplinary Commission (“ARDC”), submitted by Respondents in the Aug. 17, 2021, Response to Office Action, also allegedly signed by Mr. Firestone directly within the TEAS form, notwithstanding the fact that he was deceased at the time.  The provision of this type of evidence further demonstrates that Respondents were involved in a scheme to attempt to fool the USPTO into believing that Respondents’ submissions originated from the real Jeffrey Firestone.

In addition to improper use of Mr. Firestone’s identity, Respondents were compelled to identify a fictitious attorney in an apparent attempt to obfuscate their involvement. “Jackson George” is or was identified as an attorney of record in over 2,500 trademark applications and registrations. The majority of these applications and registrations indicate that “Jackson George” is licensed to practice law in Illinois, though some also indicate he is admitted to practice law in New York. The ARDC identifies only a single living attorney who is authorized to practice law with a name similar to “Jackson George,” namely, George Jackson III.  Other than George Jackson III, no attorney named either “Jackson George” or “George Jackson” is registered as a licensed attorney in Illinois or New York. 

On January 12, 2021, Mr. Jackson confirmed in an email to the USPTO that he “never practiced in the [trademark] arena” and informed the Office that these “Jackson George” applications and registrations do not “stem from [his] practice or [him] in any fashion whatsoever.”  Notwithstanding the fact that “Jackson George” does not seem to be a licensed attorney in Illinois or New York, multiple USPTO.gov accounts have been registered in the name of “Jackson George” and thousands of submissions have been made through TEAS naming “Jackson George” as the attorney of record, including submissions allegedly signed by this apparently nonexistent person.

Respondents’ email addresses appear in thousands of trademark application and registration records where “Jackson George” is identified as the attorney of record. Further, at least one USPTO.gov account associated with Respondents is responsible for submitting over 1,000 TEAS forms with “Jackson George” as the attorney of record, with many of these allegedly being directly signed by “Jackson George” as well. Each of these submissions contains false, fictitious, and/or fraudulent information. 

In addition, the USPTO states that the Respondents submitted false specimens of use in trademark records. 

Respondents submitted numerous specimens of use in trademark records that appear to have been created for the purpose of circumventing USPTO use in commerce and specimen rules. In particular, the specimens depict goods allegedly for sale on ecommerce websites with accompanying invoices that contain false, fictitious or fraudulent information. These specimens appear to have been developed for no other purpose than to show use in commerce as part of trademark application submissions.

For example, screenshots from 1981mall.com, which appears to be an e-commerce platform, were submitted as specimens in several applications by Respondents. However, this website appears to have been created solely for the purpose of generating specimens in trademark applications, and is not a legitimate e-commerce website that sells actual goods. The “Contact Us” page on the website identifies a location of only “USA” and the provided phone number, “123456789,” is merely a placeholder that does not even include the correct number of digits for a U.S. phone number.  Further, several links on the website direct to blank pages, such as the “About Us,” “Delivery Information,” “Privacy Policy,” and “Terms & Conditions” links. 

Respondents have until September 8, 2022 to provide a written response to this show cause order or face sanctions. 

The full show cause order is available here and well worth reading.

© 2022 Schwegman, Lundberg & Woessner, P.A. All Rights Reserved.National Law Review, Volume XII, Number 242
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About this Author

Aaron Wininger IP Attorney China Portfolio Development
Director of China Intellectual Property Law Practice Schwegman Lundberg & Woessner

Aaron Wininger is a Senior Attorney and Schwegman’s Director of China Intellectual Property. Aaron counsels both U.S. and Chinese companies on portfolio development and preparation of their patent applications and office action responses. He has worked with clients in the areas of software, networks (wired and wireless), lasers, medical devices, semiconductors and physics.

Aaron prosecutes both Chinese and U.S. trademarks. He has also drafted and prosecuted hundreds of U.S. and international patent applications in a broad spectrum of areas, including computer hardware and software,...

408-278-4059
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