[E-trademarks] 2024 USPTO filings (mostly not from this list)

Mon Jan 20 19:55:57 UTC 2025

I think I have some insight to what everyone might consider a problem.

First, we have to understand why “these applicants” file trademark applications with the USPTO.  It can easily be explained, not by the USPTO’s inaccurate suggestion that China is subsidizing filings, but because “these applicants” want to sell on Amazon.com, and that company requires (currently) a pending application with a trademark authority.  In the US, it would be the USPTO.

Why Amazon requires a trademark application is simple—they rely on the government to be the determining factor (to save them money) on who owns a TM, and hopefully to make the takedown process easier.  So if I want to sell my Tumi Backpack on their website, I cannot—because I don’t have the Amazon Brand Registry Code from Tumi’s mark.  When people ask why there are so many gibberish trademarks filed—one can just see that those are the easiest to fly through the USPTO.

Next, not all the attorneys who get involved are bad. Many are down on their luck, and many more have their identity stolen.  Others also work with larger staff to get what their clients want—a filed application to get onto ABR. I have seen all ends of the spectrum—not everyone who represents applicants from China are “bad.”

I also understand that Amazon is feeling the pressure of their mistake.  On of their outside counsels, Brad Behar, has been filing “anonymous” grievances against attorneys who practice before the USPTO—usually ones that complained to Amazon about being on a blacklist (remember that for a while if you took over the POA in an application subject to sanctions, you were placed on a blacklist).  They have since expanded their grievance submission process to anyone who has filed a large number of trademark applications from China.

Finally, the USPTO is obligated, under the APA, to allow attorneys licensed in any state or territory to appear before them in non-patent matters.  As such, I don’t believe an exam is possible, absent congressional intervention.  I also don’t know how much that would help.

My take—solve the problem by telling Amazon to stop abusing the trademark system.  If sellers in China did not need to apply for a trademark application, we would not have the flood of applications.  Unfortunately, though, Amazon has outsized influence at the USPTO, and many people on this listserv may also see a lower volume of applications, because non-Chinese sellers are looking for the same ABR code.

Emil J. Ali
PARTNER
P: 310.596.1234  |  C: 202.556.3645  |  F: 310.649.7890
emil at mccabeali.com
[McCabe & Ali, LLP]
13337 South Street, Suite 555, Cerritos, CA 90703
O: 877.633.4097  | mccabeali.com

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Miriam Richter, Esq. via E-trademarks <e-trademarks at oppedahl-lists.com>
Date: Monday, January 20, 2025 at 11:41 AM
To: Annette Heller <tmattorneyheller at aol.com>, For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Miriam Richter, Esq. <mrichter at richtertrademarks.com>
Subject: Re: [E-trademarks] 2024 USPTO filings (mostly not from this list)
All good points and some of the reasons I gave up on it. My crusade was actually not because of the fraud issues but was, as Pam describes it, the knowledge gap. It was also before the US attorney requirement. I can’t tell you how many meetings I attended where the quality of applications was the source of our angst. As Carl can confirm (because he is an exception) my gripes started with the patent attorneys and the others who do trademark work on the side. Those of us who are 100% trademark do a lot of damage control for applications filed by the non-TM practitioners.

Since then, however, our collective focus (and mine) has been shifted to bigger and more pressing issues. I don’t think we will find a solution but rather, will continue chopping away at the problem in small bites by making small changes.

Into the breach we must charge!

Best,
Miriam

Miriam Richter, Attorney at Law, P.L.
Make Your Mark! ®
Trademark, Copyright, and other Intellectual Property Matters
2312 Wilton Drive, Suite 9
Wilton Manors, Florida 33305

954-977-4711 office
954-240-8819 cell
954-977-4717 facsimile

NOTICE: This e-mail message and any attachment to this e-mail message contains confidential information that may be legally privileged. If you are not the intended recipient, you must not review, retransmit, convert to hard copy, copy, use or disseminate this e-mail or any attachments to it. If you have received this e-mail in error, please notify us immediately by return e-mail or by telephone at 954-240-8819 and delete this message. Please note that if this e-mail message contains a forwarded message or is a reply to a prior message, some or all of the contents of this message or anyattachments may not have been produced by the sender.

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Annette Heller via E-trademarks
Sent: Monday, January 20, 2025 2:27 PM
To: e-trademarks at oppedahl-lists.com; e-trademarks at oppedahl-lists.com
Cc: Annette Heller <tmattorneyheller at aol.com>
Subject: Re: [E-trademarks] 2024 USPTO filings (mostly not from this list)

I agree with Pam's reasoning.  An exam won't solve any of the problems and would become another administrative expense

Annette P. Heller
Trademark/Copyright Attorney
TM Law & Associates
400 Chesterfield Center Ste 400
Chesterfield [St Louis] MO 63017

www.TrademarkAtty.com<http://www.trademarkatty.com/>

314-469-2610 Fax 314-469-4850
In a message dated 1/20/2025 12:15:42 PM Central Standard Time, e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com> writes:

As one of only 25 certified trademark specialists in the country,* and having been on the committee that prepares the questions and grades the exams, I think I can speak with some authority!

I don't think the problem is one of knowledge but one of identity of the filer, and the PTO claims to be addressing the latter problem (in part by diligently rooting out those virtual addresses). The difficulty of an exam is where you draw the line on knowledge. Will you draw it where those business lawyers who file 2-3 applications are year, and surely don't know the TMEP (and, god forbid, are still filing paper applications) will fail, or not bother to take it? Who does that serve? (Well us, for starters.) How huge is the administrative burden and cost of testing tens of thousands of people?

The data you cited revealed very few offices filing a lot of applications. IMHO, what the attorney representation requirement did was turn a cottage industry into a consolidated industry that works way more efficiently than those individuals ever did. The industrial machine will have a lawyer take (and pass) the exam and still file just as many fraudulent applications. Crooks gonna crook and there are plenty of lawyers who would be willing to flout the ethical rules to do it - I mean, it's not like they send you to jail for it. So you won't have solved the problem but you will have reduced the number lawyers available to the public for legitimate work. So I don't see testing as a step that will actually do much to address the problem.

Pam

*AFAIK, North Carolina is the only state to have a trademark specialty and there are currently 25 of us on the list. 👋👋 my fellow NC specialists!
Pamela S. Chestek
Chestek Legal
PLEASE NOTE OUR NEW MAILING ADDRESS
4641 Post St.
Unit 4316
El Dorado Hills, CA 95762
+1 919-800-8033
pamela at chesteklegal.com<mailto:pamela at chesteklegal.com>
www.chesteklegal.com<http://www.chesteklegal.com>
On 1/20/2025 9:36 AM, Lara Pearson via E-trademarks wrote:
Perhaps the list serv can pick up the mantle if there is consensus here that this might be a  viable solution.
I'd be especially thrilled if we could swap this solution out for the ineffective, arduous Domicile Requirement that does nothing to achieve it's stated purpose (as Clarivate's table shows) and instead causes bona fide applicants time, money and stress.

Thoughts?
Lara Pearson, Esq.
Law Office of Lara Pearson Ltd, PBC & Brand Geek
775.833.1600
Calendly.com/BrandGeek<http://Calendly.com/BrandGeek> (let's meet)

Creative typoing by iPhone

On Jan 20, 2025, at 9:32 AM, Miriam Richter, Esq. <mrichter at richtertrademarks.com><mailto:mrichter at richtertrademarks.com> wrote:

Lara,

For years, I was very vocal about this idea (as many on this list serve can attest). As hard as I tried, and as many PTO and AIPLA officials as I talked to, I could not get any traction. If you want to pick up the mantle, you have my full support!

Best,

Miriam

Miriam Richter, Attorney at Law, P.L.

Make Your Mark! ®

Trademark, Copyright, and other Intellectual Property Matters
2312 Wilton Drive, Suite 9
Wilton Manors, Florida 33305

954-977-4711 office

954-240-8819 cell
954-977-4717 facsimile

NOTICE: This e-mail message and any attachment to this e-mail message contains confidential information that may be legally privileged. If you are not the intended recipient, you must not review, retransmit, convert to hard copy, copy, use or disseminate this e-mail or any attachments to it. If you have received this e-mail in error, please notify us immediately by return e-mail or by telephone at 954-240-8819 and delete this message. Please note that if this e-mail message contains a forwarded message or is a reply to a prior message, some or all of the contents of this message or anyattachments may not have been produced by the sender.

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com><mailto:e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Lara Pearson via E-trademarks
Sent: Monday, January 20, 2025 12:21 PM
To: e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>
Cc: Lara Pearson <lara at brandgeek.net><mailto:lara at brandgeek.net>; e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] 2024 USPTO filings (mostly not from this list)

One of the suggestions I made in my post was that the US PTO administer a trademark admissions exam similar in nature to that which it uses for patent attorneys.

I would love to know ya'll thoughts on whether that could work to address the issue of fraudulent, primarily Chinese, TM apps.

I'm especially curious to hear from Carl and the other patent/TM attorneys on the list.

Happy MLK Day.

Warmly,

Lara Pearson, Esq.

Law Office of Lara Pearson Ltd, PBC & Brand Geek

775.833.1600

Calendly.com/BrandGeek<http://Calendly.com/BrandGeek> (let's meet)

Creative typoing by iPhone

On Jan 19, 2025, at 6:02 PM, Pamela Chestek via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:

Fascinating reading, thanks for posting Lara.

Pam

Pamela S. Chestek
Chestek Legal
PLEASE NOTE OUR NEW MAILING ADDRESS
4641 Post St.
Unit 4316
El Dorado Hills, CA 95762
+1 919-800-8033
pamela at chesteklegal
www.chesteklegal.com<http://www.chesteklegal.com>

On 1/19/2025 5:25 PM, Lara Pearson via E-trademarks wrote:

Hi List friends:

Happy Sunday Funday.

I reposted Robert Reading & Clarivate's data on 2024 US TM filings on LinkedIn: https://www.linkedin.com/posts/brandgeek_trademarks-activity-7286822761556033536-bRZ3?utm_source=share&utm_medium=member_ios

Let's discuss (here, and there, and everywhere) and may we each find a joyful way to honor MLK tomorrow.

I feel grateful for each of you, and this list brings me joy (and so much wisdom).

Cheers!

Lara Pearson, Esq.

Law Office of Lara Pearson Ltd, PBC & Brand Geek

775.833.1600

Calendly.com/BrandGeek<http://Calendly.com/BrandGeek> (let's meet)

Creative typoing by iPhone

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