House IP Chairman Johnson Crafting Bill to Combat Frivolous Trademark Applications

House Intellectual Property Subcommittee Chairman Hank Johnson, D-Ga., is crafting legislation designed to combat frivolous trademark applications, a growing issue with Chinese companies. “We’re exploring specific ideas now, and we’ll be drafting the legislation at some point in the near future,” Johnson told us after a subcommittee hearing Thursday. It featured Patent and Trademark Office Director Andrei Iancu.

Johnson hasn’t identified specific collaborators on the committee. Several members raised the issue during the hearing, including Reps. Hakeem Jeffries, D-N.Y.; Andy Biggs, R-Ariz., Lou Correa, D-Calif., and Greg Stanton, D-Ariz. Stanton suggested potential collaboration with Biggs, who was receptive to the idea.

Iancu told the Senate IP Subcommittee in March that the U.S. might need legislation to address frivolous Chinese trademark applications. He cited a cumulative application increase of 1,100 percent in the past six years (see 1903130068).

Jeffries claimed trademark filings are nearing 500,000 per year, which Iancu confirmed. His office increased the number of application examiners, he said. “We could use additional tools in this area, and we’ll come see you,” Iancu told Biggs.

“It’s an issue worthy of exploration given the fact that we have seen a dramatic increase in trademark applications,” Jeffries told us. "Many of those trademark applications are fraudulent and frivolous."

Iancu offered a few potential remedies: requiring additional proof for trademark applicants and requiring foreign applicants to use U.S.-licensed attorneys, who might be more hesitant to include fraudulent materials in applications. On the former, Iancu said there needs to be a balance and warned against overburdening “good actors.” On the latter, U.S. attorneys might still submit bad applications, but the PTO will at least have domestic addresses to inquire, he said.

Correa asked Iancu how to elevate the issue to the level that it gets addressed in ongoing trade negotiations with China. He suggested writing a letter to U.S. Trade Representative Robert Lighthizer. Iancu said he doesn’t know if it’s an item in current trade negotiations, but it’s a “very important issue.”

PTO remained in operation for the entirety of the most recent partial government shutdown, Iancu said. That was made possible by leftover funds in the agency’s operating reserve. Patent operations were a “couple weeks away” from shutting down, and a trademark shutdown was a “couple months” away, Iancu said. The agency continues collecting fees in the event of a shutdown, Jeffries noted, asking Iancu if the PTO needs a legislative fix to access those fees for operation in future shutdowns. If Congress wants to go that route, the PTO will certainly use such resources, Iancu said.