2024 USPTO Penalty Records: Compliance Insights for Chinese Applicants

Introduction

In the field of international intellectual property, the Office of Enrollment and Discipline (OED) of the United States Patent and Trademark Office (USPTO) is responsible for overseeing the professional conduct of patent and trademark practitioners and imposing disciplinary actions on those who violate regulations.

Recently, we have reviewed the USPTO’s 2024 penalty records and identified cases involving Chinese companies. These cases reveal that some practitioners failed to comply with USPTO rules and professional ethics, which adversely affected the trademark or patent matters they handled. Consequently, this may undermine the intellectual property rights protection of Chinese applicants in the U.S.

Below are the final decisions issued by the USPTO in 2024 concerning Chinese companies and related practitioners. By summarizing these cases, we aim to remind Chinese enterprises and professionals to choose compliant agents in international intellectual property matters, strictly adhere to laws and regulations, and avoid legal risks and financial losses.

01: Violations and Disciplinary Actions Against Attorney Yue Niu

Background Information

Attorney Yue Niu practices in Beijing and holds licenses in New York and California. Since mid-2020, he has handled trademark matters at the USPTO. He has acted as the attorney of record for over 10,200 trademark applications, including approximately 1,170 applications filed on behalf of the Chinese trademark agency Shenzhen Baiyue Network Technology Services Co. Ltd. ("Baiyue"). Niu charged $10–15 per trademark application. He was also involved with Shenzhen Dingji (鼎迹) Intellectual Property Company.

Misconduct

1. Failure to Report Attorney Lou's Misconduct: Attorney Lou was suspended from practice for three months on May 12, 2021, due to violations of the USPTO’s ethics rules. Niu was aware of Lou's misconduct by at least May or June 2021 but failed to take appropriate action.
2. Inadequate Control Over Client Communications: When Lou was suspended, approximately 3,900 trademark cases were transferred to Niu. However, Niu failed to establish proper control measures to ensure he received all communications related to these trademark matters. Instead, he relied on Lou to forward emails, violating ethical obligations.
3. Issues with Cooperation with Baiyue: Between December 2020 and May 2021, Niu provided legal services for Baiyue's clients. He reviewed trademark documents using Baiyue’s proprietary software and uploaded PDF versions of trademark declaration pages with his handwritten signature. However, Niu did not review the applications Baiyue prepared and submitted to the USPTO, nor did he establish reasonable safeguards to prevent unauthorized use of his signature.
4. Deficient Examination of Use Evidence: A review of 500 trademark applications revealed that 61.5% of Office Actions involved issues with Niu’s submitted evidence of use, with 21.5% of Office Actions specifically citing that the evidence appeared to be digitally created, modified images, or computer-generated mockups.

Legal Conclusions

Niu’s actions violated multiple provisions of the USPTO Rules of Professional Conduct, including:

• Failure to provide competent representation (37 C.F.R. § 11.101)
• Failure to act with reasonable diligence and promptness (37 C.F.R. § 11.103)
• Engaging in conduct prejudicial to the administration of justice (37 C.F.R. § 11.804(d))
• Engaging in other conduct adversely affecting fitness to practice (37 C.F.R. § 11.804(i))

Sanctions

• Suspended from USPTO practice for five months
• Must comply with 37 C.F.R. § 11.58
• Granted a 30-day limited recognition period to complete pending matters and notify clients
• Placed on a 12-month probation period, during which he must regularly search the USPTO system and report any unauthorized use of his credentials
• Required to submit written reports for three years after the probation period, detailing completed searches
• USPTO accounts will be disabled after the 30-day limited recognition period
• Must cooperate with USPTO investigations into improper submissions during the probation period

02: Violations and Disciplinary Actions Against Attorney Francis Huisuk Koh

Background Information

Attorney Francis Huisuk Koh is licensed in the District of Columbia, Virginia, and Maryland, where he remains in good standing. He is authorized to handle trademark and non-patent matters before the USPTO. Since August 2019, Koh has worked with multiple Chinese trademark service firms. From 2019 to 2023, he represented over 28,000 trademark applications for foreign applicants.

Involved Companies

• Shenzhen Tengfei (腾飞) Intellectual Property Services Limited
• Qizhen (Zhejiang) Intellectual Property Agency Co., Ltd.
• DS Spring, Limited
• Shenzhen Centripetal Force Intellectual Property Co., Ltd. (向心力知识产权)
• Zhan West
• Sellergrowth (卖家成长) Network Technology Co., Ltd.
• Shenzhen Maidetong (麦德通) Business Technology Co., Ltd.
• Shenzhen SingNow (森诺) Business Consulting Co., Ltd.
• Shenzhen Haizhijing (海之境) Intellectual Property Co., Ltd.
• Shenzhen Jie Yin (捷胤) Intellectual Property Agency
• Shenzhen YiCheng IP Agency
• Yoomarks
• Xiamen Asin Intellectual Property Co., Ltd.
• Suzhou Toulan Business Co., Ltd.
• Shenzhen KXO IP Agency
• Dingchuang Enterprise Management Consulting Co., Ltd.

Between 2020 and 2022, Koh handled approximately 15,000 trademark applications, raising concerns with the USPTO’s Office of Enrollment and Discipline (OED).

Misconduct

1. Lack of Understanding of USPTO Rules: Koh failed to comply with 37 C.F.R. § 11.18, which requires reasonable investigation before submitting documents to the USPTO.
2. Failure to Act Diligently: He did not take reasonable steps to ensure that his foreign clients’ trademark documents complied with USPTO regulations. He signed certifications without proper investigation.
3. Inadequate Supervision of Non-Practitioner Assistants: He allowed non-lawyer assistants to collect information for USPTO filings without proper supervision to ensure accuracy.
4. False Statements: He falsely certified that he conducted reasonable investigations when, in fact, he had not reviewed the documents properly.
5. Harmful Conduct Affecting USPTO Trademark Registration System: Koh’s failure to ensure compliance disrupted the integrity of the USPTO trademark system.
6. Other Conduct Adversely Affecting Fitness to Practice: As a sole practitioner, Koh acted as an attorney for approximately 15,000 foreign applicants, which exceeded his capacity.

Legal Conclusions

Koh’s conduct violated multiple rules, including:

• Failure to provide competent representation (37 C.F.R. § 11.101)
• Failure to act with diligence and promptness (37 C.F.R. § 11.103)
• Failure to supervise non-practitioner assistants (37 C.F.R. § 11.503(b))
• Engaging in false statements (37 C.F.R. § 11.804(c))
• Engaging in conduct prejudicial to the USPTO system (37 C.F.R. § 11.804(d))
• Engaging in conduct adversely affecting fitness to practice (37 C.F.R. § 11.804(i))

Sanctions

• Suspended from USPTO practice for six months
• Must comply with 37 C.F.R. § 11.58
• Granted a 30-day period to complete pending cases and notify clients
• USPTO may disable his accounts after the suspension period
• May not apply for or use a USPTO verification account until reinstated
• Must cooperate with USPTO investigations into improper filings

03: Attorney Chen’s Misconduct and Disciplinary Ruling

Background Information

Attorney Che-Yang Chen holds a legal license in the District of Columbia and is authorized to handle trademark matters before the USPTO. He is also a registered patent agent, having been registered since March 9, 2009 (Registration No. 64,015), and has been involved in patent-related matters.

Misconduct

Between 2021 and 2022, Attorney Chen acted as the attorney of record for more than 9,000 trademark applications, most of which were filed by foreign applicants who required representation by a U.S.-licensed attorney. Attorney Chen collaborated with multiple foreign intellectual property firms and charged a fee of $20–50 USD per trademark application. However, he failed to comply with the USPTO’s signature rules, allowing non-practitioner assistants to sign trademark documents, including declarations, under his name—documents that he was required to sign personally.

Involved Companies

• Xingyue Technology Co. Ltd.
• INIPA (Beijing Suobang)
• Shenzhen BiaoDaGe (标大哥) Enterprise Consulting Co. Ltd.
• Shenzhen Seller Growth (卖家成长) Network Tech. Ltd.
• Shanghai Maidetong (麦德通) Software Technology Co. Ltd. (also known as "IPP Master")
• Shenzhen SeaArea (海域) IPR Technology Co., Ltd.
• One Stop Cross-Border Electricity Suppliers Service

Legal Findings

Attorney Chen admitted that his actions violated multiple provisions of the USPTO’s Rules of Professional Conduct, including but not limited to:

• Failure to provide competent representation (37 C.F.R. § 11.101)
• Failure to act with reasonable diligence and promptness in representing a client (37 C.F.R. § 11.103)
• Failure to maintain reasonable communication with clients (37 C.F.R. § 11.104(a)(3) and (b))
• Making false statements to the tribunal (37 C.F.R. § 11.303(a)(1) and (a)(3))
• Failure to properly supervise non-practitioner assistants (37 C.F.R. § 11.503(a) and (b))
• Engaging in conduct involving dishonesty, fraud, deceit, or misrepresentation (37 C.F.R. § 11.804(c))
• Engaging in conduct prejudicial to the administration of the USPTO trademark registration system (37 C.F.R. § 11.804(d))

Sanctions

Attorney Chen has been suspended from practicing before the USPTO for 14 months and is subject to supervision under a 24-month probationary period starting from the date of the final order. He must comply with 37 C.F.R. § 11.58 and complete all pending cases within 30 days, notifying his clients accordingly.

Upon expiration of the designated period, the USPTO may deactivate or suspend all of his USPTO accounts, and he will not be permitted to apply for or use a USPTO verification account before regaining eligibility to practice. During the probation period, he must conduct monthly audits of the USPTO trademark system and report any unauthorized filings submitted in his name.

As a condition for reinstatement, he must complete 6 hours of continuing legal education (CLE) in professional ethics/responsibility. Furthermore, upon resuming practice, he will be subject to supervision in both trademark and patent matters until the completion of his probationary period.

04. Misconduct of Attorney Luo and Disciplinary Ruling

Background Information

Attorney Luo obtained his legal qualification in New York in 2013 and is the sole attorney at Woodruff & Luo LLC (New York). From April 2020 to July 2023, Attorney Luo submitted approximately 10,657 trademark applications as a record attorney. Most of these applications were submitted on behalf of Chinese applicants, referred to Luo by several Chinese companies, including:

• JP Speedy Shenzhen ("IP Speedy Pengzhi Cloud"): located in Shenzhen, China.
• Shenzhen Huanyee Intellectual Property ("Huanyi"): located in Shenzhen, China.
• Shenzhen Yiwei Intellectual Property Co., Ltd ("Yiwei"): located in Shenzhen, China.
• Shenzhen Yuzhongfang Intellectual Property Service Co., Ltd ("Yuzhongfang"): located in Shenzhen, China.
• Shenzhen Zhuoxi Intellectual Property Agency Co., Ltd ("Zhuoxi"): located in Shenzhen, China.
• Dong Ming Intellectual Property ("Dongming"): located in Maoming, Guangdong Province, China.
• Haiyi Group ("Haiyi"): located in Hong Kong, China.

Misconduct

1. Unauthorized Signatures: From April 2020 to December 2021, Attorney Luo submitted trademark applications that were not signed by the named signatories, violating trademark signature rules.
2. DIRECT Signature Method: These applications used the DIRECT signature method, meaning the computer used for signing the declarations was also used to submit the applications. The data showed that these applications were filed in New York, not in China where the applicants were based.
3. Lack of Communication with Applicants: Attorney Luo did not communicate with the applicants to confirm whether they had signed the applications and instead communicated with foreign companies.
4. Failure to Review Documents: Attorney Luo did not review the receipt of documents from the USPTO to ensure they were correctly signed.

Investigation and Order

1. USPTO Action: On June 8, 2021, the USPTO issued a Show Cause Order to Huanyee, a company Attorney Luo worked with, after discovering that Huanyee had signed the attorney's name without authorization.
2. Attorney Luo's Response: Attorney Luo read the order in August 2021 but did not take sufficient measures to prevent foreign companies from using his signature, credentials, and email address to submit trademark documents. On October 22, 2024, Attorney Luo submitted a resignation affidavit, voluntarily agreeing to be excluded from the USPTO's trademark and other non-patent matters practice. Luo admitted that if he sought to restore his practice, the Director of OED would assume the allegations in the investigation were true and that he would not be able to successfully defend himself.
3. USPTO Director's Approval: The USPTO Director approved Attorney Luo's resignation affidavit. From the date the final order was issued, Attorney Luo was excluded from the USPTO's trademark and other non-patent matters practice. The final order will be made publicly available in the electronic FOIA reading room by the OED Director.

5. Misconduct of Attorney Lan Yu and Disciplinary Ruling

Misconduct

Attorney Lan Yu allowed a Chinese trademark practitioner (CRTP) to use her USPTO account to submit trademark documents, despite the fact that CRTP was not registered in the U.S. and was not authorized to use the account. CRTP used Attorney Lan Yu's account to submit nearly 7,000 trademark documents, over 2,300 of which forged Attorney Lan Yu’s electronic signature. Attorney Lan Yu failed to supervise CRTP's actions, which led to the misuse of her account and the potential harm to the intellectual property of trademark applicants and registrants.

Violations of Regulations

• 37 CFR § 11.303(d): Failure to disclose all relevant facts to the court.
• 37 CFR § 11.505: Assisting others to practice law without local legal professional regulatory approval.
• 37 CFR § 11.804(c): Involvement in acts of dishonesty, fraud, deceit, or misrepresentation.
• 37 CFR § 11.804(d): Actions that adversely affect the administration of justice.
• 37 CFR § 11.804(i): Other conduct that impacts the attorney’s eligibility to practice before the USPTO.

Sanctions

• Voluntary Resignation: Attorney Lan Yu voluntarily submitted a resignation affidavit, agreeing to be excluded from practice before the USPTO. The OED Director will publish the final order in the electronic FOIA reading room and issue a notice in the Official Gazette.
• Account Suspension: The USPTO will deactivate or suspend all of Attorney Lan Yu’s USPTO accounts. Attorney Lan Yu will not be allowed to apply for or use any USPTO-verified electronic system account until her eligibility to practice is restored.
• Prohibition of Related Activities: Attorney Lan Yu is prohibited from creating, activating, applying for, verifying, or sponsoring any accounts used to prepare or submit USPTO documents.

6. Misconduct of Attorney Chen and Disciplinary Ruling

Background Information

Attorney Chen is a licensed attorney in New York and New Jersey, authorized to handle trademark matters before the USPTO. In 2019, he began practicing trademark law and established Chen Law Firm, PLLC, later operating under the name "Faan Law." From 2021 to 2023, Attorney Chen represented several Chinese entities in submitting trademark applications in the United States. These entities included:

• Mingtu IP Co., Ltd. (Shenzhen, China)
• Mingri IP Co., Ltd. (Shenzhen, China)
• Axis (Xiamen, China)
• Shenzhen Mashang IP Co., Ltd. (Shenzhen, China)
• Shenzhen Haoguo IP Agent Co., Ltd. (Shenzhen, China)
• Shenzhen Weiwei IP Agent Co., Ltd. (Shenzhen, China)
• Simate IP (Suzhou) Co., Ltd. (Jiangsu, China)
• Shenzhen Yaotianxia IP Service Co., Ltd. (Shenzhen, China)
• Shenzhen Hyjinway IP Service Co., Ltd. (Shenzhen, China)
• Shenzhen Finley IP Co., Ltd. (Shenzhen, China)
• Yiwu Huyitong Network Technology Co., Ltd. (Jinhua City, China)
• Guangzhou Yunfeng E-Commerce Co., Ltd. (Guangzhou, China)
• Conglingdaoyi Enterprise Management Consulting (Shenzhen) Co., Ltd. (Shenzhen, China)

Misconduct

1. Trademark Document Signature Issues: Attorney Chen failed to ensure that the signatures on trademark applications and other documents were personally signed by the named signatories. He relied on foreign entities to obtain declarations and signatures without implementing sufficient controls to verify the authenticity of those signatures.
2. False Use Evidence: Attorney Chen submitted false use evidence that failed to demonstrate the actual commercial use of the trademarks, violating USPTO regulations.
3. Limited Recognition Application Issues: Attorney Chen provided false and/or misleading information in an application for limited recognition to practice before the USPTO in patent matters. This included information about his employment status and his qualification as a registered practitioner to serve as a patent record attorney.
4. Violation of Limited Recognition Terms: Attorney Chen violated the terms of his limited recognition by engaging in unauthorized legal practice. He performed patent law work in his name without a registered practitioner acting as a record attorney.

Investigation and Response

During the OED investigation, Attorney Chen was asked to provide information and evidence but submitted false information, including regarding his employment status and his relationship with Chen & Associates Law Firm. He knowingly made false statements and provided misleading documents about his patent practice and his relationship with Mr. Liu.

Disciplinary Decision

Attorney Chen agreed to and was ordered to:

• Be suspended from practice before the USPTO for 36 months from the date the final order is issued. The suspension will remain in effect until the OED Director approves his reinstatement under 37 C.F.R. § 11.60.
• Withdraw his registration application with the USPTO.

7. Misconduct of Attorney Ni and Disciplinary Ruling

Attorney Ni was disciplined for allowing a non-practicing assistant to use his signature on trademark documents submitted to the USPTO. He collaborated with Shenzhen Kaidemeng Intellectual Property Co., Ltd. to file U.S. trademark applications on its behalf or for its own filings.

Specific Misconduct:

1. 37 C.F.R. § 11.101 (Failure to Provide Competent Representation): Attorney Ni failed to provide competent representation in relation to the trademark filings.
2. 37 C.F.R. § 11.103 (Failure to Act with Reasonable Diligence): Attorney Ni did not act with reasonable diligence in managing the filings.
3. 37 C.F.R. § 11.303(a)(1) and (d) (Making False Statements to the Court): He made false statements in connection with the trademark filings.
4. 37 C.F.R. § 11.503(a) (Failure to Properly Supervise Non-Practicing Assistants): Attorney Ni did not adequately supervise the non-practicing assistant responsible for using his signature.
5. 37 C.F.R. § 11.505 (Assisting Unauthorized Practice of Law): He assisted others in practicing law in jurisdictions where they were not authorized to do so.
6. 37 C.F.R. § 11.804(c) and (d) (Involvement in Dishonesty, Fraud, Deception, or False Statements): Attorney Ni was involved in actions related to dishonesty, fraud, and false statements.

Disciplinary Outcome:

Attorney Ni's eligibility to practice in USPTO trademark matters has been suspended for five months, and he is required to undergo supervision during the suspension period.

Insights

There are significant differences between U.S. trademark applications and those in China. Applicants should pay attention to the following points:

1. Carefully Choose a Trademark Agency: Entrust a legitimate and professional intellectual property agency or U.S. lawyer to file the application. Verify the lawyer's credentials through official U.S. websites to avoid trademark cancellation due to non-compliance by the agency. Avoid blindly choosing based on low prices.
2. Choose the Appropriate Application Class: The U.S. trademark classification system is detailed. Applicants should carefully select the goods and services classes according to their business plans. Avoid selecting too many classes, as failure to provide sufficient evidence of use could lead to trademark cancellation and increased costs.
3. Ensure Compliance of Use Evidence: Use evidence must be submitted when renewing a trademark 5-6 years and 10 years after registration. Companies should retain genuine evidence of use to ensure that the trademark is in actual or intended use. Fabricating false evidence can lead to rejection or cancellation of the trademark.

If you're interested in the original USPTO documents, please "click here" to view the related files.