The USPTO’s recent show cause order to Chinese IP firm Shenzhen Huanyee Intellectual Property Co., Ltd., about its alleged unauthorized practice of law in the US in over 8,000 applications and widespread use of false information in those applications. The Office may invalidate all such applications.

The USPTO has issued these in other situations, like this 2018 order to USAEU Intellectual Property Agency Co. Ltd. (over 2,500 applications) and a prior round of 2016 enforcement. Prior rounds of enforcement did not invalidate the applications or resulting registrations, so the Office is definitely being more aggressive this time. A list of enforcement actions — lots of which are against Chinese representatives — is available here.

TM TKO did some research on some of the most common Chinese email providers (qq.com, 126.com, 163.com, sina.com, 139.com, sohu.com, and foxmail.com) and how frequently email addresses from those providers are used as the correspondent of record in USPTO trademark filings. It’s a lot! A surprisingly large number of these just flatly list a firm with a Chinese address as correspondent — at least 50%. This isn’t necessarily problematic — a US-licensed attorney could be practicing there — but I wouldn’t be shocked to find future unauthorized practice actions against some counsel of record in this data set.

2021: 23,500+

2020: 49,000+

2019: 22,300+

2018: 22,200+

2017: 22,900+

2016: 14,600+

The number of applicants listing a US address and using a typically-Chinese email address is pretty high. Again, it’s not impossible that this happens, but I’d be shocked if a decent percentage of these (a) don’t have a common “address” and (b) wouldn’t be of some interest to the PTO’s disciplinary czars.

2021: 540+

2020: 1800+

2019: 640+

We’ll be monitoring additional USPTO enforcement actions to see if this aggressive enforcement comes to pass (especially invalidating applications) turns into a continuing priority, or is more of a sporadic twitch of their enforcement muscles.

It’s a beautiful spring so far, and we’re all enjoying the pretty blossoms and the pollen-driven sneezes that go along with getting outdoors. To honor the return of all the grasses, trees, and other plants in our lives, we’re taking a closer look at how trademarks interact with these products.

Trademarks for Plants

Can you get a trademark for a brand that you will use with plants? Of course! Recent registrations for apple trees include marks like SERUI, CRIMSON SNOW, APIFRUIT, COSMIC CRISP, SUBLIME ORGANICS, BUD 10, KIKU, RED ROMANCE, and many more.

Varietal and Cultivar Names

There is a big exception — the “varietal” or “cultivar” names of a cultivated variety of subspecies of a plant or seed. The Office considers these to be the equivalent of the “generic” name for the plant or seed, regardless of whether the name is a fanciful name or a code. TMEP § 1202.12. The varietal or cultivar name is used in a plant patent as the identifier for the variety of plant or seed, and remains so regardless of whether the patent expires. In re Pennington Seed Co., 466 F.3d 1053, 80 USPQ2d 1758, 1762 (Fed. Cir. 2006).

Examination of Varietal and Cultivar Names

The Office starts by checking the registry of names under the Plant Variety Protection Act. The TMEP lists http://www.ars-grin.gov/npgs/searchgrin.html as the URL, but the Germplasm Resources Information Network (“GRIN”) database has apparently been updated to https://www.ars-grin.gov/PVP/Search. Dictionary evidence and more can also be relevant, as is WIPO’s fantastic PLUTO Plant Variety Database https://www3.wipo.int/pluto/user/en/index.jsp.

Some of these plant varietals are simply alphanumeric codes; it’s unusual for a company to ever attempt to protect these as a trademark. For example:

PVP Application Summary: 200000290

More arbitrary names are another matter altogether. Companies often pick a name for the new product without taking trademark concerns into account, and attempt to protect the cultivar name as a trademark. This never goes well.

The Office views these as incapable of functioning as a trademark – the equivalent of an insurmountable genericness refusal. No amount of advertising expenditure can salvage it as a mark. See, e.g., In re Farmer Seed & Nursery Co., 137 USPQ 231, 231-32 (TTAB 1963). It doesn’t even matter if the varietal name was never actually used — it’s sufficient that it was registered as a varietal name. In re American Onion Int’l, Inc., Ser. No. 76660662, p. 5 (TTAB Aug. 8, 2008), available at https://ttabvue.uspto.gov/ttabvue/v?pno=76660662&pty=EXA&eno=13. However, if a term is a variety name for one type of plant (like a dianthus) it won’t bar registration of that term for a different plant (like an apple tree), at least if the applicant makes that clear in their description of goods. See, e.g., the registration for RED ROMANCE, Reg. No. 5493245.

The University of Minnesota, which developed the varietal, attempted to register HONEYCRISP for “apple trees, namely variety Minnesota 1711 R.” Ser. No. 74156209. The Office’s online records are spotty in the early 1990s, and the full file history is not online, but it went abandoned due to a failure to respond to an Office Action — we can confidently assume that it foundered on the plant varietal refusal. In other applications, the Office also found the term descriptive or generic as applied to related goods, like cider.

Plant varietal refusals don’t often make it to the TTAB. But, a prominent recent example saw Rainier Fruit Company’s attempt to register a lightly stylized version of HONEYCRISP for apples. Rainier didn’t even try to argue the cultivar issue — it disclaimed HONEYCRISP — but the stylization was not sufficiently distinctive.

In re Rainier Fruit Co., Ser. No. 86108344 (TTAB Sep. 29, 2015), available at https://ttabvue.uspto.gov/ttabvue/v?pno=86108344&pty=EXA&eno=10.

What’s getting through? Marks that pair HONEYCRISP with an additional, (more) distinctive elements. The two currently active registrations are a Supplemental Registration for PREMIER HONEYCRISP, with HONEYCRISP disclaimed, for “live honeycrisp apple trees,” and a Principal Register registration for ROYAL RED HONEYCRISP for “live apple trees.”

Takeaways for Trademark Lawyers

Please make sure your clients plan for trademark protection before filing for a plant varietal production certificate and plant patents. If trademark and patent counsel are not on the same page, using the cultivar name in the PVP certificate will be fatal to attempts to claim trademark rights in that term.

This is going to end up a very short post, even if the research ended up taking a while! We decided to compare the extent to which Major League Baseball and the Premier League teams protected their IP, comparing US filings for the Premier League teams and EUIPO filings for the baseball teams.

Baseball had pretty comprehensive filings for key marks in the EUIPO in Classes 25 (clothing merch) and 41 (games / etc.). The top of the Prem’s financial tables had similar coverage, but the bottom — newly promoted or up-and-down teams like Leeds, Burnley, Fulham, West Brom, and Sheffield United — had no US coverage; Aston Villa had a registration in Class 25 but not 41. Even an upper-middle-class team, by both the table and revenues, Everton, had no US filings for its house mark.

What accounts for this difference? It may be due to organizational differences. While MLB teams own their own marks domestically, MLB registers marks on its teams’ behalf internationally. Teams in the Prem appear to on their own — and a less-popular team may view international coverage as a great investment if they just don’t have much of a fan base outside of their local market. Among the US major sports, baseball and hockey are generally thought of as having more local fan bases than the nationally-driven interest in the NBA and NFL, but they haven’t stinted on their European brand protection efforts.

The Difficulties Facing the US Patent & Trademark Office in Examining Specimens

The trademark community has been mildly frustrated with the Trademark Office in 2020 and into 2021 for two related reasons:

• the feeling that a lot of crap has gotten onto the trademark registry, largely weird marks originating from China. Many of these are alleged to have dubious specimens or other issues with use claims, e.g. claiming use on a broad swathe of goods.

• the feeling that otherwise perfectly valid specimens are getting caught up needlessly by new examination standards, increasing prosecution times and costs.

Let’s look at this from the Trademark Office’s perspective, and take a look at some examples of the sorts of applications that tend to generate practitioner discontent.

I. Spot-Checking New Applications For Specimen Issues

I focused on 1-word, use-based US filings without design elements filed by Chinese applicants in December 2020. I further restricted to just those that have the text “no meaning” to avoid translation/transliterations. The types of marks this generates – TERIQO, BEIYEIDEI, FABSMURD, MIZILI, URCHESE, FEOICH, and GOMNOA, are the sort of marks that tend to generate a skeptical eyebrow raise from practitioners. It’s a little ironic that these marks that generate practitioner skepticism are the most inherently distinctive marks on the protectability spectrum, since they’re gibberish in the first place.

Let’s take a look at these seven examples.

• TERIQO for scissors, tweezers, etc. (specimen)
  • I’m not sure; it’s a screenshot and invoice from SellersGlobal. The photo of the hand actually holding the tweezers is the easiest to see, and looks legit. The shipping address on the invoice is partially redacted, but seems to be missing an actual street address anyway.
• BEIYEIDEI for toys (specimen)
  • The photo looks pretty gritty/real.
• FABSMURD for toys and pet toys (specimen)
  • Looks real; used on a tag. Multiple angles help and demonstrate “reality” well.
• MIZILI for paper products (specimen)
  • Used on a point-of-sale eBay website. Probably “real,” although the page doesn’t show if the mark is also used on the physical product.
• URSCHSE for various sorts of bags (specimen)
  • From an online receipt shipping to the US. Receipts are a bit weird, since it should be the customer getting the receipt not the intermediary vendor (CoolMall), but it does at least seem to show shipping to the US.
• FEOICH for cosmetics (specimen)
  • Same as above – CoolMall receipts.
• GOMNOA for candles and gasoline (specimen)
  • Amazon sales pages for candles. Candles and fuel usually aren’t provided under the same mark, so the scope of the goods covered in the use claim seem more debatable than the specimen itself.

None of these seem to be clear problems taken on their own merits. But, what about in the aggregate?

II. The Broader Question — What Kind of Registry Do We Want?

There were 32,986 applications that met these narrow criteria in just December 2020. That’s a TON of applications. For comparison, in December 2015, there were 30,098 US applications filed in total. That’s 2,000 less than just this this subset of China-based 1(a), 1-word, not-a-translation, standard character marks applications!

Let’s assume that many of these sales/shipments are pretty low-volume, at least at the time of registration. What could be done to preserve a smaller registry that reflect the marks that US consumers are actually likely to encounter? One option might be to require a certain volume of commercial activity. This could avoid the issue of sellers obtaining registrations for de miminis sales through online platforms that aren’t very big in the US. This would obviously have some serious impacts, cutting off registration as an option for new ventures, or at least pushing more small businesses to “sit on” an ITU application while building up their commercial presence. It would also raise difficulties for non-commercial brands that don’t generate sales. Some of these could be addressed by evidence other than sales, like website visits from US IP addresses or the like (potentially game-able, but more work), or just by having different use standards for domestic and foreign applicants (though that may raise equal protection issues).

We certainly don’t have a perfect solution — we’d love to hear your thoughts as the Office continues to grapple with these examination complexities.