ESTTA Tracking number:
`
`ESTTA1366847
`
`Filing date:
`
`06/24/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Petition for Cancellation
`
`Notice is hereby given that the following party has filed a petition to cancel the registration indicated below.
`
`Petitioner information
`
`Name
`
`Entity
`
`Address
`
`Attorney informa-
`tion
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`LSC IP LLC
`
`Limited Liability Company
`
`810 BULL LEA RUN
`SUITE 30
`LEXINGTON, KY 40505
`UNITED STATES
`
`Incorporated or
`registered in
`
`United States
`
`APRIL L. BESL
`DINSMORE & SHOHL LLP
`255 E. FIFTH STREET, SUITE 1900
`CINCINNATI, OH 45202
`UNITED STATES
`Primary email: april.besl@dinsmore.com
`Secondary email(s): trademarks@dinsmore.com,
`kristina.schiavone@dinsmore.com
`513-977-8527
`
`Docket no.
`
`141488
`
`Registration subject to cancellation
`
`Registration no.
`
`6496951
`
`Registration date
`
`09/28/2021
`
`Register
`
`Registrant
`
`Principal
`
`JINZHAO, LI
`NO.2,THE 5TH LANE,BUTOU
`ROAD,SHENGSHISAN, VILLAGE,SHAXI TOWN,
`ZHONGSHAN GUANGDONG, 528471
`CHINA
`
`Goods/services subject to cancellation
`
`Class 025. First Use: Aug 3, 2020 First Use In Commerce: Aug 3, 2020
`All goods and services in the class are subject to cancellation, namely: Coats; Gloves; Pants; Shoes;
`Socks; Trousers; Underwear; Down suits; Hats; Jackets; Masquerade costumes; Skirts; Sweatshirts;
`Swimsuits; Uniforms; Vests; Waistbands; Clothing layettes; Sleep masks
`
`Grounds for cancellation
`
`Fraud on the USPTO
`
`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`2009)
`
`

`

`Attachments
`
`Petition for Cancellation_LEXOGO_6.20.24docx.pdf(213166 bytes )
`Exhibits A-H_Petition for Cancellation_LEXOGO pdf.pdf(3485766 bytes )
`
`Signature
`
`/Kristina M. Schiavone/
`
`Name
`
`Date
`
`Kristina M. Schiavone
`
`06/24/2024
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of U.S. Trademark Registration No.: 6496951
`For the Mark: LEXOGO
`Date of Registration: Sep. 28, 2021
`
`
`LSC IP LLC,
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`Petitioner,
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`v.
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`Li Jinzhao,
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`Respondent.
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`:
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`Cancellation No.:
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`Under 37 C.F.R. § 2.111, Petitioner, LSC IP LLC (hereinafter “Petitioner”), a limited
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`PETITION FOR CANCELLATION
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`liability company duly organized and existing under the law of the State of Kentucky with a
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`principal place of business at 810 Bull Lea Run, Suite 30, Lexington, Kentucky 40505, believes
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`that it will be and is currently being damaged by the registration of the mark LEXOGO shown in
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`U.S. Trademark Registration No. 496951 owned by a Chinese individual, Li Jinzhao (hereinafter
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`“Respondent”), and by its undersigned counsel, hereby files a petition for cancellation.
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`
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`The relevant grounds for cancellation are as follows:
`
`1.
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`Upon information and belief, Respondent is a Chinese individual located at No. 2,
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`The 5th Lane, Butou Road, Shengshisan, Village, Shaxi Town, Zhongshan Guangdong China
`
`528471, and is the current owner of U.S. Registration No. 6496951 for LEXOGO via an
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`assignment of record (“Respondent’s Mark”).
`
`

`

`2.
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`Respondent’s Mark was originally filed for registration by a Chinese domiciled
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`individual, Xie Huijuan, located at No. 1, Youyi Road, Xiashan District, Zhanjiang, Guangd, China
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`524000 under U.S. Trademark Application Serial No. 90147345 (the “Application”) on August
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`30, 2020 claiming actual use in commerce and a first use date of August 3, 2020 anywhere and in
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`commerce. A copy of the Application as filed is attached hereto as Exhibit A.
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`3.
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`The Application was signed by the listed attorney of record, a gentleman named
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`Jeffrey S. Firestone. The Attorney of Record information in the Application included a primary
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`email address of xutingservice@yeah.net and a secondary email address of 1252763389@qq.com.
`
`See Exhibit A.
`
`4.
`
`Although the Attorney of Record on the Application, Jeffrey S. Firestone, now
`
`deceased, was a US attorney of law, it is well established that Mr. Firestone was not a trademark
`
`attorney. Indeed, despite the scope of his practice and his passing, Mr. Firestone has been linked
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`to thousands of fraudulently filed trademark applications, some of which were filed after his death
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`in July 2021. See Exhibit B.
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`5.
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`In fact, on August 25, 2022, the USPTO issued a Show Cause order to several
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`Chinese companies that were linked to filings listing Jeffrey F. Firestone as the Attorney of Record.
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`See Exhibit C for a copy of the Show Cause Order.
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`6.
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`The USPTO granted registration to the Application under U.S. Registration No.
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`6496951 on September 28, 2021 for “coats; Gloves; Pants; Shoes; Socks; Trousers; Underwear;
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`Down suits; Hats; Jackets; Masquerade costumes; Skirts; Sweatshirts; Swimsuits; Uniforms;
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`Vests; Waistbands; Clothing layettes; Sleep masks” (“Respondents Goods”) in International Class
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`25.
`
`
`
`2
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`

`

`7.
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`On March 12, 2024, Respondent recorded an assignment on Reel No. 8365 and
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`Frame No. 0494 assigning all right, title, and interest in Respondent’s Mark to Li Jinzhao, the
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`current owner and Respondent. See Exhibit D.
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`8.
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`On March 14, 2024, Respondent filed a Change in Representation form with the
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`USPTO to update the Attorney of Record from Jeffrey S. Firestone to Joe Costello, a licensed US
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`Attorney in the State of Florida.
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`9.
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`In doing so, despite supposedly changing counsel, Respondent maintained the
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`secondary email address of 1252763389@qq.com and updated the primary email address to
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`Sales08@dspringgroup.com. Additionally, Respondent listed Joe Costello’s firm address as 1 w
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`las olas blvd ste 600, Fort Lauderdale, Florida. A copy of the Change in Representation form is
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`attached hereto as Exhibit E.
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`10.
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`The address Respondent included for Mr. Costello is associated with Schwarzrich
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`& Associates, P.A., a criminal defense firm in Florida. See Exhibit F.
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`11. While Mr. Costello is an attorney practicing and licensed in the State of Florida,
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`according to Joe Costello’s firm website and his bar registration information with the State of
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`Florida, Mr. Costello’s email address is jac@costellofirm.com and his firm address is 300 S Pine
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`Island Rd Ste 216 Plantation, FL 33324-2620, not the address used in Respondent’s Mark. See
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`Exhibit G.
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`12.
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`Upon information and belief, the Sales08@dspringgroup.com email address for the
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`Attorney of Record is linked to a Chinese trademark consulting company called Shenzhen Shiwu
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`Management Consulting Co., Ltd. (“Shenzhen”) offering explicit IP services for procuring U.S.
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`trademark registrations. See Exhibit H.
`
`
`
`3
`
`

`

`13.
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`Shenzhen includes on its About Us page a “.qq” email address, similar to the “.qq”
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`email addresses listed for each attorney of record associated with Respondent’s Mark, which
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`suggests the company is providing false, fictitious, or fraudulent attorney information in order to
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`register trademarks with the USPTO, which constitutes submission of a document for an improper
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`purpose in violation of 37 C.F.R. § 11.18(b).
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`14.
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`Respondent’s false representations and improperly signed submissions, were both
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`willful and fraudulent. See, e.g., In re Bose Corp., 580 F.3d 1240, 1243, 91 USPQ2d 1938, 1939
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`(Fed. Cir. 2009).
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`15.
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`Upon information and belief, Respondent or someone acting on Respondent’s
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`behalf knowingly and with the direct intent to obtain registration by such action, provided false
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`attorney information to circumvent 37 C.F.R. § 2.11, which requires a qualified US licensed
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`attorney represent foreign-domiciled trademark owners, such as Respondent.
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`16.
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`Petitioner is the owner of LEXGO and #LEXGO, as reflected in U.S. Application
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`Serial Nos. 98132661 and 98132660 which were both filed based on actual use in commerce for
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`“clothing, namely, shirts and hats” in International Class 25. Collectively, referred to as
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`“Petitioner’s Marks.”
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`17.
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`On April 22, 2024, the USPTO issued an Office Action against Petitioner’s Marks
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`citing Respondent’s Mark on the grounds of a potential likelihood of confusion refusal.
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`18.
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`Petitioner’s continued and lawful use of Petitioner’s Marks in connection with
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`Petitioner’s Services will be impaired by the continued registration of Respondent’s Mark.
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`19.
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`As noted herein, Registrant committed fraud on the USPTO by knowingly,
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`willfully, and intentionally providing false, fictitious, or fraudulent signature information in
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`
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`4
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`

`

`violation of 37 C.F.R. § 11.18(c) in an attempt to procure a fraudulent registration for a mark
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`Registrant had no legitimate right to claim or own.
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`20.
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`The foregoing representations were made by Respondent with the knowledge and
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`belief that those statements were false.
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`21.
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`The foregoing representations were made with the intent to induce authorized
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`agents of the USPTO to grant said registration including the examining attorney, and reasonably
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`relying upon the truth of said false statements, the USPTO did, in fact grant said registration to
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`Respondent’s Mark.
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`22.
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`The foregoing misrepresentations concern facts that are material to the application
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`and the USPTO’s decision to issue a trademark registration.
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`23.
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`Respondent knowingly made the foregoing false, material misrepresentations of
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`fact in connection with the Application and subsequent filings detailed herein with the deliberate
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`and willful intent to deceive the USPTO.
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`24.
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`As such, Respondent committed fraud in the procurement of his trademark
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`registration and as a result, Respondent’s entire registration is void and must be cancelled. See
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`TBMP 309.03(c)(1); 15 U.S.C. § 1120.
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`25.
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`Petitioner is damaged and will continue to be damaged because of Registrant’s
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`continued registration as Respondent’s Mark stands as a potential block to Petitioner’s Marks.
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`26.
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`Petitioner reserves the right to amend this Petition to allege other claims in the event
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`that further information is discovered that indicates they are appropriate.
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`27. The cancellation fee in the amount of $600.00 is filed herewith.
`
`
`
`5
`
`

`

`WHEREFORE, Petitioner prays that Respondent’s U.S. Registration No. 6496951 be
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`cancelled and that this Petition for Cancellation be sustained in Petitioner’s favor. Petitioner
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`requests such other and further relief as the Board may deem just and proper.
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`Respectfully Submitted,
`
`
`
`
`
`
`
`
`
`s/ April L. Besl/
`April L. Besl, Esq.
`255 E. 5th St., #1900
`Cincinnati, OH 45202
`[p] 513-977-8527
`[f] 513-977-8141
`[email] april.besl@dinsmore.com
`
`Trademarks@dinsmore.com
`
`
`Kristina M. Schiavone, Esq.
`1001 Lakeside Ave., Suite 990
`Cleveland, OH 44114
`Email: Kristina.schiavone@dinsmore.com
`
`Attorneys for Petitioner, LSC IP LLC
`
`
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`Date:
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`June 24, 2024
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`6
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`

`

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`EXHIBIT A
`EXHIBIT A
`
`

`

`6/17/24, 5:37 PM
`
`Trademark Status & Document Retrieval
`
`For assistance with TSDR, email teas@uspto.gov and include your serial number, the document you are looking for, and a screenshot of any error
`messages you have received.
`
`STATUS
`
`DOCUMENTS
`
`MAINTENANCE
`
`Back to Search
`
`Print
`
`Generated on: This page was generated by TSDR on 2024-06-17 17:36:56 EDT
`
`Mark: LEXOGO
`
`US Serial Number: 90147345
`
`US Registration Number: 6496951
`
`Filed as TEAS Plus: Yes
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`Register: Principal
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`Mark Type: Trademark
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`TM5 Common Status
`Descriptor:
`
`Application Filing Date: Aug. 30, 2020
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`Registration Date: Sep. 28, 2021
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`Currently TEAS Plus: Yes
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`LIVE/REGISTRATION/Issued and Active
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`The trademark application has been registered with the Office.
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`Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
`
`Status Date: Sep. 28, 2021
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`Publication Date: Jul. 13, 2021
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`Mark Information
`
`Mark Literal Elements: LEXOGO
`
`
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`Standard Character Claim: Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`Mark Drawing Type: 4 - STANDARD CHARACTER MARK
`
`Translation: The wording "LEXOGO" has no meaning in a foreign language.
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`For: Coats; Gloves; Pants; Shoes; Socks; Trousers; Underwear; Down suits; Hats; Jackets; Masquerade costumes; Skirts; Sweatshirts;
`Swimsuits; Uniforms; Vests; Waistbands; Clothing layettes; Sleep masks
`
`International Class(es): 025 - Primary Class
`
`U.S Class(es): 022, 039
`
`Class Status: ACTIVE
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`First Use: Aug. 03, 2020
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Current Owner(s) Information
`
`Use in Commerce: Aug. 03, 2020
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44D: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`https://tsdr.uspto.gov/#caseNumber=90147345&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
`
`1/3
`
`

`

`6/17/24, 5:37 PM
`
`Trademark Status & Document Retrieval
`
`Owner Name: JINZHAO,LI
`
`Owner Address: NO.2,THE 5TH LANE,BUTOU
`ROAD,SHENGSHISAN,VILLAGE,SHAXI TOWN,
`ZHONGSHAN GUANGDONGCHINA 528471
`
`Legal Entity Type:
`
`INDIVIDUAL
`
`Citizenship: CHINA
`
`Attorney/CorrespondenceInformation
`
`Attorney of Record
`
`Attorney Name: Joe Costello
`
`Attorney Primary Email SalesO8@dspringgroup.com
`Address:
`
`Attorney Email Authorized: Yes
`
`Correspondent
`
`Correspondent Joe Costello
`Name/Address:
`1 w las olas blvd ste 600
`Fort Lauderdale, FLORIDA United States 33301
`
`Ispringgroup.com
`Correspondent e-mail: Sales0
`1252763389@qq.com
`
`Correspondent e-mail Yes
`Authorized:
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`Date
`
`Mar. 20, 2024
`
`Mar. 15, 2024
`
`Mar. 15, 2024
`
`Mar. 15, 2024
`
`Mar. 15, 2024
`
`Sep. 28, 2021
`
`Jul. 13, 2021
`
`Jul. 13, 2021
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`Jun. 23, 2021
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`Jun. 07, 2021
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`Jun. 05, 2021
`
`Jun. 05, 2021
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`Jun. 05, 2021
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`Mar. 08, 2021
`
`Dec. 30, 2020
`
`Dec. 30, 2020
`
`Dec. 30, 2020
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`Dec. 26, 2020
`
`Oct. 03, 2020
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`Sep. 02, 2020
`
`Description
`
`Proceeding Number
`
`AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP
`
`TEAS WITHDRAWAL OF ATTORNEY RECEIVED-FIRM RETAINS
`
`TEAS CHANGE OF CORRESPONDENCERECEIVED
`
`ATTORNEY/DOM.REP.REVOKEDAND/OR APPOINTED
`
`TEAS REVOKE/APP/CHANGEADDR OF ATTY/DOM REP RECEIVED
`
`REGISTERED-PRINCIPAL REGISTER
`
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`
`PUBLISHED FOR OPPOSITION
`
`NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`TEAS/EMAIL CORRESPONDENCE ENTERED
`
`CORRESPONDENCERECEIVEDIN LAW OFFICE
`
`ASSIGNED TO LIE
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`TEAS RESPONSETO OFFICE ACTION RECEIVED
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`
`NON-FINAL ACTION E-MAILED
`
`NON-FINAL ACTION WRITTEN
`
`ASSIGNED TO EXAMINER
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
`
`NEW APPLICATION ENTERED
`
`TM Staff and Location Information
`
`TM Staff Information - None
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`File Location
`
`Current Location: PUBLICATION AND ISSUE SECTION
`
`Date in Location: Sep. 28, 2021
`
`AssignmentAbstractOfTitle Information
`
`Summary
`
`ConveyanceFilter
`
`https://tsdr.uspto.gov/#caseNumber=90147345&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
`
`
`
`
`
`

`

`6/17/24, 5:37 PM
`
`Total Assignments: 1
`
`Assignment 1 of 1
`
`Trademark Status & Document Retrieval
`
`Registrant: Xie Huijuan
`
`
`
`Conveyance: ASSIGNS THE ENTIRE INTEREST
`
`Reel/Frame: 8365/0494
`
`Date Recorded: Mar. 12, 2024
`
`Supporting Documents: assignment-tm-8365-0494.pdf
`
`Assignor
`
`Assignee
`
`Name: HUIJUAN, XIE
`
`Legal Entity Type:
`
`INDIVIDUAL
`
`Name: JINZHAO, LI
`
`Legal Entity Type:
`
`INDIVIDUAL
`
`Pages: 2
`
`Execution Date: Mar. 06, 2024
`
`Citizenship: CHINA
`
`Citizenship: CHINA
`
`Address: NO.2,THE 5TH LANE,BUTOU ROAD,SHENGSHISAN VILLAGE,SHAXI TOWN,
`ZHONGSHAN GUANGDONG , CHINA 528471
`
`Correspondent
`Correspondent Name: JOE COSTELLO
`
`Correspondent Address: 1 W LAS OLAS BLVD STE 600
`FORT LAUDERADALE, FL 33301
`
`Domestic Representative - Not Found
`
`Proceedings - None recorded
`
`https://tsdr.uspto.gov/#caseNumber=90147345&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
`
`3/3
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`

`

`
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`
`
`EXHIBIT B
`EXHIBIT B
`
`

`

`6/17/24, 5:40 PM
`
`U.S. brand owners were heartened to learn of the Show Cause
`Show Cause Showdown for Fraudulent Filers at the USPTO | Sterne Kessler
`Order issued late last week by the USPTO’s Office of the
`Commissioner for Trademarks, which takes aim at potentially
`thousands of trademark applications thought to be
`fraudulently filed and registered.
`
`As the Order indicates, the USPTO has uncovered evidence
`that a group of entities (identified as “Shenzhen Haiyi
`Enterprise Management Co., Ltd., Haiyi Enterprise Service
`(Shenzhen) Co., Ltd. and Haiyi Co., Ltd., and the employees,
`agents, affiliates, subsidiaries, parent companies, holding
`companies, or officers thereof, including Haiyi Group Co., Ltd.,
`Chen Huanyong, Liu Chunyu, and Huang Wenhai” – collectively
`“Respondents”) have been filing applications and other
`documents to obtain or maintain registrations that make
`material misrepresentations or contain false attorney
`information and signatures. The Respondents must show
`cause as to why the USPTO should not immediately sanction
`them for fraudulently filing thousands of trademark-related
`documents with the USPTO.
`
`When an entity is sanctioned, it means that the USPTO has
`determined the entity has violated the USPTO’s Trademark
`Rules of Practice. Sanctions can include any or all of the
`following:
`
`1.
`
`Termination of proceedings, including termination
`of a pending application which the owner will not
`
`https://www.sternekessler.com/news-insights/publications/show-cause-showdown-fraudulent-filers-uspto/
`
`1/4
`
`

`

`6/17/24, 5:40 PM
`
`by the name of Jackson George as the attorney of record in
`over 2,500 trademark applications and/or registrations.
`Show Cause Showdown for Fraudulent Filers at the USPTO | Sterne Kessler
`The Show Cause Order is a public example of the USPTO’s
`efforts to monitor and take action against those who try to
`circumvent its rules, such as those requiring a U.S. attorney to
`act on behalf of foreign applicants.
`
`If the offending entities are sanctioned, the USPTO may also
`update electronic records for the affected registrations to
`include a notice that the registrations are subject to an order
`for sanctions, which could impact the underlying validity of the
`registration.
`
`In light of the proliferation of such fraudulent filings, brand
`owners facing challenges with registering marks or
`maintaining registrations should look with a critical eye at any
`blocking third party marks. In addition, as encouraged by the
`USPTO, brand owners seeking trademark counsel should
`carefully analyze and investigate solicitations from individuals
`and firms advertising low-cost application and registration-
`related legal services. If the offer looks too good to be true, it
`probably is.
`
`This article appeared in the August 2022 issue of MarkIt to
`Market®. To view our past issues, as well as other firm
`newsletters, please click here.
`
`https://www.sternekessler.com/news-insights/publications/show-cause-showdown-fraudulent-filers-uspto/
`
`2/4
`
`

`

`6/17/24, 5:40 PM
`
`Show Cause Showdown for Fraudulent Filers at the USPTO | Sterne Kessler
`
`https://www.sternekessler.com/news-insights/publications/show-cause-showdown-fraudulent-filers-uspto/
`
`3/4
`
`

`

`6/17/24, 5:40 PM
`
`Vis it our Oice
`
`Show Cause Showdown for Fraudulent Filers at the USPTO | Sterne Kessler
`
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`6/17/24, 5:38 PM
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`USPTO: Chinese Firms Used Dead Attorney to Submit U.S. Trademark Application Filings - China IP Law Update
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`USPTO: Chinese Firms Used Dead Attorney to
`
`Submit U.S. Trademark Application Filings
`
`Post Date:
`
`08/30/2022
`
`Author:
`
`Aaron Wininger
`
`Share Post:
`
`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, (cid:240)ctitious or fraudulent information in thousands of trademark
`application and registration records.” Speci(cid:240)cally, “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
`Je(cid:237)rey Firestone, including (cid:240)lings signed and submitted after his death, and/or
`(2) the signature of “Jackson George,” a presumed (cid:240)ctitious attorney. “
`
`https://www.chinaiplawupdate.com/2022/08/uspto-chinese-firms-used-dead-attorney-to-file-trademark-applications/
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`6/17/24, 5:38 PM
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`USPTO: Chinese Firms Used Dead Attomey to Submit U.S. Trademark Application Filings - China IP Law Update
`
`CHINA IP Law Update
`PAA KF WAeeH
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`GENE Torah Videos Opts=vents CalonTredocah tive Kids Simchas MareiTovs
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`joftrey Firestone, a beloved father, lawyer ard active member of Chabad
`in Shenzhen, China who mentored many, passed away,
`
`& Yoseph Yehoshuah- jeffrey Firestone « belove
`vember Of Chabad in Shenzhen,
`China, passed away
`
`active
`and
`on 21 Ay, 5737
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`ren, Temima, Sara, Gershon.
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`Per the USPTO,
`
`Jeffrey Stewart Firestone is or was identified as an attorneyofrecord in over
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`8,000 trademark applications and/orregistrations. Despite newsarticles
`
`reporting Mr: Firestone’s death on July 30 or 31, 2021, more than 300
`
`submissions, allegedly signed by Mr. Firestone, have beenfiled with the
`
`JSPTO since August 2, 2021.
`
`https://www.chinaiplawupdate.com/2022/08/uspto-chinese-firms-used-dead-attomey-to-file-trademark-applications/
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`6/17/24, 5:38 PM
`
`USPTO:Chinese Firms Used Dead Attorney to Submit U.S. Trademark Application Filings - China IP Law Update
`
`CHINA IP Law Update
`PRAT Qe EM
`
`AWULTICY ULL CCULU MULCUVEL; UIE UL UIE UL 1U.gUV uccuUiits 1eg1ater cu tu
`
`Respondents submitted four Responsesto Office Actions allegedly signed
`
`directly within the individualelectronic TEAS form by Mr. Firestone after his
`
`death. Each ofthese submissions contains false, fictitious, and/or fraudulent
`
`information.
`
`Ofparticular note, Application Serial No. 90209151 contains alleged “proof”
`
`ofMr. 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
`
`deceasedat the time. The provision of this type of evidence further
`
`demonstrates that Respondents were involved in a schemeto attemptto fool
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`the USPTOinto believing that Respondents’ submissionsoriginated from the
`
`real Jeffrey Firestone.
`
`In addition to improperuse ofMr. Firestone’s identity, Respondents were
`
`compelled to identify a fictitious attorney in an apparent attempt to
`
`obfuscate their involvement. “Jackson George”is or wasidentified as an
`
`attorney ofrecord in over 2,500 trademark applications and registrations.
`
`The majority of these applications andregistrations indicate that “Jackson
`
`George”is licensed to practice law in Illinois, though somealso indicate heis
`
`admitted to practice law in New York. The ARDCidentifies only a single
`
`living attorney whois authorizedto practice law with a namesimilar to
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`“Jackson George,” namely, George Jackson III. Other than George JacksonIII,
`
`https://www.chinaiplawupdate.com/2022/08/uspto-chinese-firms-used-dead-attormney-to-file-trademark-applications/
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`6/17/24, 5:38 PM
`
`USPTO:Chinese Firms Used Dead Attorney to Submit U.S. Trademark Application Filings - China IP Law Update
`
`CHINA IP Law Update
`PRANRFH QAR Ew
`
`On January 12, 2021, Mr. Jackson confirmed in an email to the USPTOthat he
`
`“never practiced in the [trademark] arena”and informedthe Office that
`
`these “Jackson George” applications andregistrations 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 attorneyin Illinois or
`
`New York, multiple USPTO.gov accounts have been registered in the name of
`
`“Jackson George” and thousands ofsubmissions have been madethrough
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`TEAS naming “Jackson George”as the attorney ofrecord, including
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`submissionsallegedly signed by this apparently nonexistent person.
`
`Respondents’ email addresses appear in thousandsoftrademark application
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`and registration records where “Jackson George”is identified as the
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`attorney ofrecord. Further, at least one USPTO.gov accountassociated with
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`Respondents is responsible for submitting over 1,000 TEAS forms with
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`“Jackson George”as the attorney ofrecord, with manyofthese allegedly
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`being directly signed by “Jackson George”as well. Each of these submissions
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`containsfalse, fictitious, and/or fraudulent information.
`
`In addition, the USPTOstates that the Respondents submitted false specimensof
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`use in trademark records.
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`Respondents submitted numerous specimensof use in trademark records
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`that appear to have been created for the purpose ofcircumventing USPTO
`
`use in commerce and specimen rules. In particular, the specimens depict
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`goodsallegedly for sale on ecommerce websites with accompanying
`
`https://www.chinaiplawupdate.com/2022/08/uspto-chinese-firms-used-dead-attormney-to-file-trademark-applications/
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`6/17/24, 5:38 PM
`
`USPTO:Chinese Firms Used DeadAttorney to Submit U.S. Trademark Application Filings - China IP Law Update
`
`CHINA IP Law Update
`PRIAIRM QAR Ew
`
`LLU VY HOU LEE CULIILEICL CL UO PUL UE CLUE I PACUDUILEE OOLULL,
`
`For example, screenshots from 1981mall.com, which appears to be an e-
`
`commerce platform, were submitted as specimensin several applications by
`
`Respondents. However, this website appears to have been created solely for
`
`the purpose ofgenerating specimensin 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
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`number, “123456789,” is merely a placeholderthat does not even includethe
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`correct numberofdigits for a U.S. phone number. Further, several links on
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`the website direct to blank pages, such as the “About Us,” “Delivery
`
`Information,”“Privacy Policy,” and “Terms & Conditions”links.
`
`Respondents haveuntil September8, 2022 to provide a written responseto this
`show cause orderorface sanctions.
`
`The full show causeorderis available here and well worth reading.
`
`@ Author: Aaron Wininger
`
`Aaron Winingeris a Principal and Directorof the China Intellectual Property at Schwegman Lundberg &
`Woessner.
`
`Copyright © 2024 Schwegman Lundberg & Woessner.
`
`| All rights reserved. Web Design byPerrill.
`
`https://www.chinaiplawupdate.com/2022/08/uspto-chinese-firms-used-dead-attormney-to-file-trademark-applications/
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`5/5
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`6/17/24, 5:38 PM
`
`Chinese Firm Uses Dead Attorney to File
`Thousands of Trademark Applications
`
`Chinese Firm Uses Dead Attorney to File Thousands of Trademark Applications - VASLaw Intellectual Property Blog
`
`By Vidas, Arrett & Steinkraus P.A.
`
`September 2, 2022
`
`3 Comments
`
`In a show cause order dated August 25, 2022, the US Trademark Office indicated it had reason to
`believe that Shenzhen Haiyi Enterprise Management Col, Ltd. (and others) provided false, fictitious
`or fraudulent information in thousands of trademark applications and registrations.
`
`See the show cause order here: https://www.uspto.gov/sites/default/files/documents/TM-show-
`cause-order-Shenzhen-Haiyi.pdf
`
`They used either a dead attorney named “Jeffrey Firestone” or a presumed fictious attorney
`“Jackson George”, while using Chinese email addresses for the correspondence email address of
`record.
`
`This is the unauthorized practice of law and a big no no.
`
`Lesson – use a registered US attorney to file, prosecute and maintain your trademarks.
`
`Feel free to contact us at www.vaslaw.com if you need any help with your trademarks. We are not
`dead or fictious.
`
`Last updated on September 2, 2022
`
`https://vaslawip.blog/chinese-firm-uses-dead-attorney-to-file-thousands-of-trademark-applications/
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`6/17/24, 5:38 PM
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`April 16, 2024, 7:57 pm
`Chinese Firm Uses Dead Attomeyto File Thousands of Trademark Applications - VASLaw Intellectual Property Blog
`
`WZEbPHTOSJu
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`JImxFeyu
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`May 11, 2024, 5:24 pm
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`FocdIzNRCKIfYVXQ
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`Reply
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`Copyright 2024 — Vidas, Arrett & Steinkraus, P.A.. All rights reserved. Sinatra WordPress Theme
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`EXHIBIT C
`EXHIBIT C
`
`

`

`NOTE TO THE FILE 
`
` 
`
` 
`Date: August 25, 2022 
`By: The Office of the Deputy Commissioner for Trademark Examination Policy 
`
`
`
`NOTE:           
`
`The attached Show Cause Order (exhibits omitted) was issued on August 25, 2022.  A complete 
`version of the Order is presently available at https://www.uspto.gov/trademarks/trademark‐
`updates‐and‐announcements/orders‐issued‐commissioner‐trademarks.  The Order was placed 
`into this record because the U.S. Trademark Serial Number was identified in Exhibit A to the 
`Order. 
`
`

`

`August 25, 2022
`
`To:
`
`Shenzhen Haiyi Enterprise Management Co., Ltd.
`Haiyi Enterprise Service (Shenzhen) Co., Ltd.
`Haiyi Co., Ltd.
`Haiyi Group Co., Ltd.
`
`Chen Huanyong,
`Liu Chunyu
`Huang Wenhai,
`Officers, Agents, Shareholders, and/or Legal Representatives of the above entities
`
`Via Email:
`haii@szhaii.com, 18820907621@163.com, haiiIP@outlook.com, ice@szhaii.com,
`haii.em0320@gmail.com
`
`In re Shenzhen Haiyi Enter. Mgmt. Co., Ltd., Haiyi Enter. Serv. (Shenzhen) Co.,
`Ltd.., Haiyi Co., Ltd., and Haiyi Group Co., Ltd.
`
`Dear Chen Huanyong, Liu Chunyu, and Huang Wenhai,
`
`The United States Patent and Trademark Office (“USPTO” or “Office”) has reason to
`believe that Shenzhen Haiyi Enterprise Management Co., Ltd., Haiyi Enterprise Service
`(Shenzhen) Co., Ltd. and Haiyi Co., Ltd., and the employees, agents, affiliates,
`subsidiaries, parent companies, holding companies, or officers thereof, including Haiyi
`Group Co., Ltd., Chen Huanyong, Liu Chunyu, and Huang Wenhai, (collectively,
`“Respondents”) have provided false, fictitious or fraudulent information in thousands of
`trademark application and registration records.1 As detailed below, available information
`
`1 A list of U.S. Trademark Serial Numbers believed to include submissions made by Respondents is
`attached hereto as Exhibit A. The list is not necessarily exhaustive because Respondents’ conduct has
`continued over a long period of time and Respondents may make additional submissions implicating
`additional records.
`
`

`

`Show Cause Order – In re Shenzhen Haiyi Enter. Mgmt. Co., Ltd., et al.
`
`supports the conclusion that Respondents’ misconduct was intentional and calculated to
`circumvent procedural requirements and to advance their unauthorized practice of law.
`
`This order requires Respondents to show cause as to why the USPTO should not
`immediately sanction Respondents pursuant to 35 U.S.C. § 11.18(c) and the Terms of
`Use for USPTO Websites.
`
`All submissions to the USPTO in trademark matters are governed by the U.S. trademark
`laws and the regulations regarding practice in trademark matters before the USPTO,
`including the rules concerning signatures, certification, and representation of others
`(collectively “USPTO Rules”). See generally 15 U.S.C. §§ 1051 et seq.; 37 C.F.R. pts. 2,
`11.
`
`Only attorneys admitted to practice before the bar of the highest court of a U.S. state or
`jurisdiction may practice before the USPTO in trademark matters on behalf of others. 37
`C.F.R. §§ 2.1, 2.17(a), 11.1, 11.14(a).2 Practicing before the Office in trademark matters
`includes all “law-related service[s] that comprehend[] any matter connected with the
`presentation to the Office . . . relating to a client’s rights, privileges, duties, or
`responsibilities under the laws or regulations administered by the Office for the . . .
`registration of a trademark.” 37 C.F.R. § 11.5(b). Individuals who are not U.S.-licensed
`attorneys may not (1)