I. Introduction

Recently, many Chinese merchants on the US Amazon e-commerce platform have encountered issues where their trademark applications for Amazon Brand Registry are being rejected. The primary reasons include failure to comply with US trademark application rules or improper operations during the brand registry process.

At some point, various versions of an 'Amazon Attorney Blacklist' began circulating, claiming that attorneys on this list have issues and that trademarks under their names cannot be registered. Consequently, whenever a US Amazon station faces registration problems, from trademark applicants to agencies, the immediate assumption is that the trademark's representing attorney is at fault.

Strangely, among the various situations encountered during Amazon trademark brand registry, there are cases where trademarks represented by attorneys on the blacklist are consistently rejected, and conversely, cases where registration is approved despite the attorney being on the list. Feedback from customers shows that rejection emails from Amazon mention that the USPTO requires US trademark applications to be represented by a US licensed attorney, who must comply with USPTO rules of professional conduct and their state bar's rules of professional conduct, subtly implying issues with the attorney's qualifications.

Even after some clients provided proof that their representing attorney had not violated any rules, their brand registry issues remained unresolved. The source of this Amazon Attorney Blacklist is unclear, with no definitive standard for its creation, and its accuracy and authority are questionable.

Throughout various e-commerce platforms, only Amazon requires sellers to undergo trademark brand registry and has developed its own trademark brand registry system, establishing a proprietary brand registration system.

In reality, the USPTO is an agency under the US Department of Commerce, a government entity. Amazon is an e-commerce enterprise. Their natures are fundamentally different. The USPTO has no control over Amazon's registry rules, and Amazon cannot exercise long-arm jurisdiction over the USPTO's investigations into attorney compliance, nor does it have a say in the compliance of US attorneys.

The attorney qualification issues hinted at by Amazon Brand Registry essentially belong to Amazon's own system requirements for brand registry and do not represent the views of the USPTO or the American Bar Association (ABA).

II. USPTO Officially Requires US Licensed Attorneys and Investigates Their Practice Compliance

With the development of economic globalization, cross-border trade demands among countries have increasingly grown. The US, as a developed country with huge market demand, has seen a massive influx of cross-border e-commerce entrants. With the emergence of cross-border e-commerce platforms, the demand for US trademark brand registration has increased daily, thus presenting the USPTO with more arduous tasks.

To address potential risks arising from the surge in trademark registration demands, on July 2, 2019, the USPTO announced a new rule [1][2], requiring all foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to be represented by an attorney who is licensed to practice law in the United States. The effective date for the new trademark rule was August 3, 2019.

After the policy implementation, as can be understood from the USPTO's published list of disciplinary sanctions [3], the USPTO has increasingly emphasized compliance in attorney practice and intensified crackdowns on violations.

Relevant documents from this disciplinary list reveal the aspects involved in the USPTO's determination of violations. Sanctions for attorneys or agents violating rules are as follows:

Agencies Submitting US Trademark Applications Fraudulently Using US Attorney Names:

(1) An investigation document published by the USPTO on August 25, 2022, noted that attorney Jeffrey Stewart Firestone was recorded as the representing attorney for over 8,000 trademarks. News reported that this attorney died on or around July 30/31, 2021, but since August 2, 2021, over 300 documents submitted to the USPTO were allegedly signed by him. Filing documents signed by a deceased attorney on the USPTO's TEAS system is fraudulent.

(2) An investigation document published by the USPTO on August 25, 2022, noted that 'Jackson George' was recorded as the representing attorney for over 2,500 trademarks. Most indicated 'Jackson George' had a law license in Illinois, some in New York. The Attorney Registration and Disciplinary Committee (ARDC) only identified one licensed practicing attorney with a similar name, George Jackson III. Official investigation confirmed 'Jackson George' was a fictitious US representing attorney.

(3) An investigation document published on February 16, 2023, noted that Jerome Eady submitted applications where he signed declarations using his own name, explicitly stating his role as 'owner,' despite having no apparent connection to the applicants. He knowingly misused the USPTO system to improperly file applications, repeatedly provided false/misleading contact information to deceive the USPTO, and even forged attorney information to evade detection.

US Attorneys Failing to Fulfill Professional Duties During Collaboration with Agencies:

(1) An investigation document published on December 10, 2021, noted that attorney Yi Wan submitted over 18,000 applications between August 3, 2019, and March 31, 2021, and allowed collaborating agencies to use his attorney information to submit applications independently without review. He only became aware of these applications upon receiving official Office Actions.

(2) An investigation document published on September 7, 2022, noted that attorney Kathy Q. Hao communicated in 2019 with agencies and applicants via 'WeChat' to collect information, authorized the use of her signature to be inserted into application documents, and returned the documents to the agencies via electronic signature. Furthermore, this attorney did not appear to be a specialist USPTO attorney. After being informed of the investigation in late December 2020, she continued to violate USPTO rules by collaborating with agencies.

(3) An investigation document published on September 7, 2022, noted that attorney Zhihua Han collaborated with multiple agencies in 2019, used the USPTO's electronic signature method to sign hundreds of trademark documents, and did not spend sufficient time reviewing application documents before submission, leading to obvious errors.

(4) An investigation document published on September 7, 2022, noted that attorney Weibo Zhang submitted approximately 8,500 applications in 2020 (including 3,000 reviewed, signed, and submitted in December, with over 350 submitted on December 31 alone) and 9,800 applications in 2021. His collaboration method with multiple agencies involved signing application documents electronically without sufficient pre-submission review. Additionally, he was negligent regarding Office Actions for trademarks under his name, failing to confirm with agencies if applicants intended to respond, interpreting agency silence as non-response.

(5) An investigation document published on December 12, 2022, noted that attorney Jonathan G. Morton began representing a large number of foreign trademark applicants in 2019 and failed to diligently review the authenticity of trademark use specimens.

III. Assessing Attorney Compliance

From a client's perspective, it is advisable to assess an attorney's compliance before entrusting them with trademark representation to avoid issues affecting trademark validity and Amazon registry. So, how can one assess attorney compliance?

Clients can make a preliminary judgment through the following methods:

Use the state bar directories and lookup URLs provided by the American Bar Association (ABA) website to verify attorney licensing information and confirm its authenticity.

https://www.americanbar.org/groups/legal_services/flh-home/flh-lawyer-licensing/

https://www.nycourts.gov

Confirm if the attorney has any violations through these two official USPTO URLs:

URL 1: Check if the attorney is on a list of violations:

https://foiadocuments.uspto.gov/oed/

URL 2: Check if the attorney has received any administrative orders from the USPTO:

https://developer.uspto.gov/tm-decisions/search/administrative

Additionally, clients should pay more attention to the following aspects when seeking trademark agencies or US attorneys for registration:

Regarding the Attorney:

When entrusting a trademark agency with registration, first understand the agency and the attorney handling the submission. Seek attorneys who are legitimate, compliant, professional, and responsible.

Regarding Documentation:

As USPTO trademark examination is increasingly strict, clients must comply with relevant US laws and regulations when submitting trademarks. Provided documents must be authentic and valid.

Regarding Amazon Trademark Brand Registry:

Amazon's brand registry rules are subject to adjustments. Before filing, clients must understand the latest Amazon trademark registry process and documentation requirements, ensuring all materials are prepared before proceeding.

IV. Three Attempts to Resolve Amazon Trademark Brand Registry Rejections

Given the current situation of Amazon Trademark Brand Registry rejections due to 'abusive attorney,' what methods can clients try to resolve this issue?

The following are methods used in some successful registration cases for reference:

Withdraw or change the trademark attorney of record before requesting Amazon Trademark Brand Registry.

Cross-site registry using stores from other marketplaces (sites other than the US site), submitting US trademark information and related documents to Amazon for registry request.

Exercise patience and follow the steps required by Amazon Trademark Brand Registry for appeals.

V. Conclusion

In light of the current situation of Amazon Trademark Brand Registry rejections, this report discussed the USPTO's investigation into practicing attorney compliance and three potential solutions after rejection, offering suggestions to clients. For specific operational procedures after Amazon brand registry rejection, please contact our company.

What examination requirements will the USPTO have for trademark applications? What should clients do facing strict examination requirements? The next report will reveal this. Stay tuned.

Copyright © Pengzhuyun. All rights reserved. Unauthorized reproduction, adaptation, or distribution prohibited.

Pengzhuyun US Trademark Policy Research Department

May 20, 2023

References:

[1] Federal Register:

https://www.federalregister.gov/documents/2019/07/02/2019-14087/requirement-of-us-licensed-attorney-for-foreign-trademark-applicants-and-registrants

[2] US Federal Trademark Regulations:

https://www.uspto.gov/trademark/laws-regulations/trademark-rule-requires-foreign-applicants-and-registrants-have-us

[3] Official US Website for Administrative Sanctions:

https://developer.uspto.gov/tm-decisions/search/administrative