China IP LawyersA few days ago the invaluable China Film Insider ran a piece about how American cable powerhouse Home Box Office is trying to stop the Wuxi, China-based HBO Studio Restaurant & Bar from using the HBO name without permission. But this movie-themed restaurant has every right to its name. As of 2013, it has owned a trademark registration for “HBO” in Class 43 for restaurant services.

HBO is perhaps emboldened by the recent, well-publicized victories of Donald Trump and Michael Jordan, who triumphed after years attempting to wrest “their” trademarks away from trademark squatters. Or by the judicial interpretation released by the Supreme People’s Court last month describing how China was going to take a stricter stance against trademark squatters.

But even if the Trump and Jordan decisions are harbingers of a new trend in protecting well-known marks, brand owners like HBO need to understand the limits of such rulings. Michael Jordan and Donald Trump only won partial victories. The trademark squatters’ rights were only invalidated with respect to those products or services for which Jordan and Trump were already famous. For Jordan: sporting goods. For Trump: construction services. Notably, the decision by the Trademark Review and Adjudication Board (TRAB) that paved the way for Trump to register “TRUMP” for construction services left intact the trademark squatter’s right to use “TRUMP” for mining and drilling services. Because, presumably, Trump was unable to show that “TRUMP” was well-known for those services.

In the HBO Studio Restaurant matter, Home Box Office faces two big problems. First of all, HBO is not well-known in China in ANY context. Until 2014, when HBO signed a streaming deal with Tencent, the only place you could legally watch HBO in China was in high-end hotels that catered to foreigners. And HBO’s brand awareness in China hasn’t exactly taken off since then. A few months ago, Chinese actor Cao Jun, the star of the HBO Asia original production “Master of the Drunken Fist: Beggar So,” admitted to knowing very little about HBO. Frankly, HBO would have difficulty invalidating ANY trademark on the basis of being a well-known mark in China. But in this case, they have to climb an even steeper hill. They need to prove that the “HBO” name is well-known with respect to restaurant services. And that is almost certainly not going to happen. In the alternative, HBO could argue that the Wuxi restaurant’s trademark was filed in bad faith, but China has been unwilling to invalidate trademarks on this basis except in the case of marks filed by serial trademark squatters and former business partners.

Don’t get me wrong: this restaurant has shamelessly coopted the HBO name in their entertainment-themed Western restaurant, and the restaurant owner’s complaints on its Weibo account about being bullied for no reason by a big American company have the air of protesting too much. But HBO’s strategy is almost certain to fail, because the Wuxi restaurant has superior rights under Chinese trademark law.

It appears HBO has already been down this road before; they had filed an application on March 28, 2014 to cover Class 43 services (including restaurant services), but were rejected for everything but renting cooking equipment, renting drinking fountains, and renting non-theater, non-tv studios. The basis for the rejection is not publicly available, but it is almost certainly because the Wuxi restaurant had filed its trademark application first. I note that on June 6, 2016, HBO filed a new application for Class 43 services, apparently hoping for a different outcome on their second try. I wish them well, but am going to assume that they have a Plan B.

HBO’s better strategy would have been to quietly approach this restaurant and offer to buy the trademark. Maybe HBO already tried that and failed.

I took a quick look and there are dozens of registrations for “HBO” in China, covering all manner of goods and services. And most of them aren’t owned by Home Box Office. That’s a lot of invalidations and appeals to file. Good news for China IP lawyers, but not good news for HBO. Although HBO can take heart from one thing: HBO Studio Restaurant & Bar has a high rating on Dianping, the Chinese version of Yelp.

To reiterate: the recent trend in Chinese trademark jurisprudence to protect well-known marks is heartening, but only extends to those goods or services for which brands are already well-known. If you want to protect your mark for other goods and services, you need to file in a broader range of classes before anyone else.

WeChat and China WFOEAnyone who pays attention to China knows WeChat is the biggest name in Chinese social media. But the extent of WeChat’s dominance, and the way it has integrated itself into nearly every aspect of daily life in China, has significant implications for foreign companies doing business in China.

More than 95% of Internet users in China access the Internet via mobile devices at least part of the time. And of those mobile users, about 80% use WeChat. That is a stunning number, especially when you consider that WeChat is not just for sending messages and sharing news, pictures, and video; it also offers online shopping, mobile payments for everything from groceries to Lunar New Year “red envelopes” (gifts of cash), and Uber-like vehicle for hire services. More than 300,000 retail stores have already integrated WeChat Payment into their point-of-sale systems.

Given the ubiquity of WeChat, numerous companies have opened up official WeChat accounts and regularly use them to share information about products and promotions. Companies do exactly the same thing on Facebook in other countries, but because Chinese consumers can do so much more on WeChat, dispensing information via an official WeChat account is just the bare minimum. Chinese consumers have come to expect more.

A recent story about Starbucks becoming the first foreign company to become integrated into WeChat’s Wallet feature highlights the extent to which companies can benefit from WeChat. WeChat’s Wallet feature allows people to purchase Starbucks items and give them to their friends, all within WeChat. Given the love of social gifting in China – it’s how streaming celebrities earn money – I would expect this feature will increase Starbucks sales and it’s a great example of a foreign company adjusting its business strategy to take advantage of the idiosyncratic Chinese economy.

An official WeChat account can be opened by any company. But if you want Chinese consumers to be able to access that account – which is really the main reason to open an official WeChat account – the account must be formed by a legally formed Chinese entity.

That brings us to an old China Law Blog chestnut: do you really need to form a WFOE in China to sell your products? Of course not. There are a number of perfectly good reasons why companies might want to enter the Chinese market without forming a WFOE. But the more WeChat matters, and the more you want to control your company’s message to Chinese consumers, the more important it will be to have a China WFOE (or even a Joint Venture) to take advantage of all WeChat has to offer.

China trademark lawyersOur China lawyers do a lot of work for clients seeking to remove listings of counterfeit goods from Chinese e-commerce sites. Most of these listings are for obviously, sometimes extravagantly counterfeit merchandise, offered in vast quantities at far-below retail prices, with pictures either lifted from the real manufacturer’s website or showing products of dubious quality, and often featuring product variations beyond those offered by the real manufacturer. The sellers are usually unsophisticated trading companies trying to make a quick buck, and we have no trouble removing these listings.

But for some listings, it’s not so clear the merchandise is counterfeit. The quantities are sometimes limited. The prices are not unreasonably low. And the goods appear to be genuine. Many clients still want these listings removed because the sellers are unauthorized resellers, but an Aliprotect takedown request may not be the appropriate strategy.

These goods are by and large “parallel imports” or grey market goods – authentic products legally purchased in a foreign country, imported into China, and then offered for sale. China does not have a clearly articulated position on the legality of parallel imports for trademarked goods, but courts have generally held that selling such goods in China does not constitute trademark infringement.

China follows the “international exhaustion of trademark rights” standard, which means that once trademarked goods have been sold overseas, a brand owner’s exclusive rights to those goods in China have been exhausted, and a reseller’s use of that trademark in China does not constitute trademark infringement. The contrasting standard would be “national exhaustion of trademark rights,” which would only allow resellers to use the owner’s trademark if the first sale of the goods was in China.

But just because China has a de facto policy of allowing parallel imports does not mean that trademark owners are powerless to stop sellers of parallel imports on JD.com or Tmall. Sure, it may not be possible to stop the occasional seller of small lots brought over from America. But it’s the sellers who claim to be authorized dealers or exclusive resellers who are the real problem. And though a trademark infringement claim probably will not work against those companies, it may be possible to succeed with other claims. In the cases where the plaintiff has been able to stop parallel imports, the courts have ruled based on grounds such as unfair competition and consumer protection.

In a 2009 case before the Changsha Intermediate People’s Court, French tiremaker Michelin was able to stop the sale of parallel imports by showing that the defendant that was selling its tires had not properly obtained China health and safety certifications. And in a more recent case, French cosmetic company Pierre Fabre was able to stop the sale of parallel imports by showing that the defendant was improperly holding itself out as the “Chinese official website” and “China shop” for Pierre Fabre, and had used Pierre Fabre’s trademarks and copyrighted material on its own website in a manner suggesting a formal business relationship.

On the other hand, in the past four years courts in Shanghai, Tianjin, and Beijing, respectively, have ruled against Victoria’s Secret, the French wine group Les Grands Chais de France, and the German beermaker Köstritzer Schwarzbierbrauerei in their efforts to stop the sale of parallel imports, because in each case the seller had purchased genuine products, distributed them through standard channels, and sold the products as is without suggesting any relationship between the seller and the plaintiff.

In other words, the appropriate response to e-commerce sales of parallel imports is fact-specific and usually requires additional investigation. Needless to say, before trademark owners even consider taking action, they better make sure they have properly registered their own trademarks.

China distributorsClients sometimes come to our China lawyers with an apparent conundrum. They have found a Chinese distributor for their product, and both sides are ready to begin selling products in China right away. As in, tomorrow. So far so good. But our client sells a branded product, and they haven’t registered their brand as a trademark in China. Not so good.

The client knows (perhaps from reading this blog) that the only realistic way to get trademark rights in China is by registering them, because China is a first-to-file country.

And then they learn that it usually takes 12-18 months to register a trademark in China. At this point they become concerned about the nontrivial period when their distributor will be selling their branded product in China without any sort of trademark protection.

They should be concerned. But not too concerned, as long as they file their China trademark application right away and enter into a written agreement with their Chinese distributor. The distribution agreement should contain provisions stating that the trademark belongs to the client and the distributor may use the mark in China, but will not file any competing applications, oppositions, or invalidations.

The distribution agreement should also include appropriate contractual language protecting the IP more generally. And if you want this agreement to work to protect your trademark in China, it is much better for it to be in Chinese.

A distribution agreement with the above provisions (along with countless others, of course) will sufficiently protect your IP as against your China distributor. The remaining concern, which cannot be addressed in a distribution agreement, is infringement by a third party while the trademark application is pending.

Without a valid registration in China, there usually isn’t much you can do to stop a third party from using “your” mark. But any legitimate Chinese company is going to shy away from a strategy that only gives them 12 months to establish and profit from a brand name, after which it must stop using it or risk paying damages. That leaves the counterfeiters, for whom 12 months is more than enough time to make a profit, but who aren’t going to be interested until a brand has developed enough name recognition to be worth ripping off. Still, yet another reason to file a trademark application now. Because the distributor is going to be the one who really bears the brunt of any infringement in China. Sophisticated Chinese distributors know this and so we often have situations where American or European companies come to us after having been instructed by their potential or actual distributors to file their trademarks in China.

One final note: many foreign companies do not create a Chinese brand name before selling their product in China, only to discover that a name has been created for them and registered as a trademark – often by their Chinese distributor. If you haven’t already come up with a Chinese name for your product, do so now, and also make sure your distribution agreement requires the distributor to assign to you any Chinese-language marks that relate to your product that it has already registered.

China trademark takedown
China trademark takedowns

China’s lack of an affirmative trademark use requirement allows trademark owners to register marks in more classes and covering more products and services than what they actually sell. Starbucks is a prime example of a company that has taken full advantage of this strategy by (for example) registering “STARBUCKS” as a trademark in all 45 classes of goods and services.

The benefits of registering in a whole host of China trademark classes really comes into play when dealing with infringing goods on Alibaba and other e-commerce platforms. Many of our clients have found that infringement starts with their core lineup of products but quickly moves to things they haven’t released and perhaps never will. Any consumer product is fair game for knockoff artists. If they can imagine it, or more precisely if they can imagine someone buying it, it will turn up on Alibaba.

Though Alibaba is responsive when you request a takedown for a product covered by your trademark registration, they often will decline to take action if the product is outside the scope of your registration. So if an enterprising Chinese merchant began selling Game of Thrones brand deodorant on Alibaba, HBO might only succeed with a takedown request if it had already registered a trademark covering deodorant.

Registering your trademark is the only realistic way to gain trademark protection in China, and that protection is limited by the classes and subclasses of goods and services covered by your registration. If you want protection for other products, you need to register in the appropriate classes and subclasses to cover those products.

Registering in all 45 classes is not a realistic strategy for most company. But when devising your IP strategy for China, you should think about not just the products and services you intend to sell in China, but also the ones you don’t want someone else to sell under your name.

China trademark registrationUnlike the United States, China does not have an affirmative requirement to prove that a trademark is being used in commerce. You do not have to prove use for a trademark application to proceed to registration, and once a trademark is registered you do not have to prove you are still using it to maintain or renew the registration.

Foreign companies have come to realize that China’s lack of a use requirement is a double-edged sword. On the one hand, it allows trademark squatters to register marks for a wide range of products and services they have no intention of ever providing. On the other hand, it allows “real” trademark owners to register their marks to cover a much wider range of products and services than would be allowed in most other countries. As we have noted before, Starbucks employs this strategy better than anyone: it has registered “STARBUCKS” as a trademark in all 45 classes of goods and services.

However, China will require evidence of use if a trademark registration is challenged for non-use. The basic rule is that once a mark has been registered for three years, it is vulnerable to a non-use cancellation. At that point, if a third party files a non-use cancellation, the owner has two months to provide evidence of use within the past three years.

If you are actively marketing your goods or services in China, then it should be fairly easy to provide evidence of use. Your use of the trademark in question on packages, containers, labels, manuals, advertisements, product displays, signage or at exhibitions are all likely to be sufficient. In general, original documents are required, but when a product has a lot of ephemera this is a low bar.

Where it gets difficult is when the only use of the trademark in question is on a product manufactured solely for export. It is not completely resolved in China whether such use constitutes either (1) use in China with respect to a trademark infringement action or (2) use in China with respect to a non-use cancellation. But in our experience, the Chinese Trademark Office (CTMO) will generally accept manufacturing in China, even if solely for export, as sufficient to defeat a non-use cancellation.

But you still need original documentary evidence!

It is all too common for foreign companies to order products from their China manufacturer for years on end using English-only documents that never identify the trademark on the products, and often never even identify the product with sufficient specificity. That makes it almost impossible to prove use to the CTMO’s satisfaction. What you want is documents that are in Chinese and clearly demonstrate your use of the mark in China on the products covered by your trademark registration: documents like invoices, shipping documents, quality inspections, and customs export declarations. Photographs are helpful to provide context but, standing alone, are usually insufficient to demonstrate use.

Typically, most (or all) of the documents that can prove trademark use for export-only products are held by the factory. So while you are still on good terms with your factory, you should make sure to keep a complete, regularly updated set of documents for each of your China trademark registrations. If things go south with your supplier, you don’t want your trademarks to be at risk too.

China TrademarksTwo recent court decisions from China have upheld the trademark rights of Donald Trump to the word “TRUMP” and Michael Jordan to the word “乔丹” (the Chinese transliteration of the name “Jordan”). These decisions have been seen as indications that famous people’s names now have more protection in China. Whether this is a trend or just an anomaly remains to be seen, but it’s worth noting that these long-running controversies have been over shortened, arguably ambiguous versions of celebrities’ names. When a disputed trademark registration is for a celebrity’s full name, the dispute is almost always resolved quickly, and in the celebrity’s favor.

Donald Trump, Michael Jordan, and other famous people have already succeeded in numerous such actions. For example, Dong Wei, the same trademark squatter whose “TRUMP” trademark was recently invalidated by Donald Trump, had also filed multiple trademark applications for “DONALD TRUMP” back in 2009. Once the applications proceeded to publication, Donald Trump – @realDonaldTrump, that is – opposed them and was successful the first time. These cases simply don’t get as much publicity because the outcome is not controversial.

China, like many civil law countries, has long given deference to people protecting their full names as trademarks. Formally, the protection is accorded under Article 32 of the Trademark Law, which holds that a “trademark application shall neither infringe upon another party’s prior existing rights, nor be an improper means to register a trademark that is already in use by another party and enjoys substantial influence.” The examination guidelines used by the Chinese Trademark Office (CTMO) and the Trademark Review and Adjudication Board (TRAB) further elaborate that prior existing rights include, among other things, name rights.

These guidelines sound great but in practice are applied with the same degree of subjectivity as everything else at the CTMO. It’s unclear how famous you have to be to be deemed to have “name rights” in China for a given field, or what sort of evidence is sufficient. However, it is clear that the standard of proof is much lower than what is necessary to show that an ordinary mark is well known.

One final point: in practice, a famous person can only invoke his or her name rights during a trademark opposition or invalidation proceeding. The CTMO won’t make these determinations during the examination phase. It’s up to every celebrity to police the use of his or her name in China.

China trademarksIn a surprising decision the Supreme People’s Court of China gave Michael Jordan a partial victory in his long-running trademark battle with Qiaodan Sports. As I wrote last year, Jordan has been trying for years to cancel trademarks he alleges Qiaodan Sports registered in bad faith, including the marks “乔丹” (the Chinese-language version of “Jordan”) and “Qiaodan” (the pinyin version of 乔丹). Previously, Jordan has lost at every step of the way; the Trademark Review and Adjudication Board and various Chinese courts have all rejected Jordan’s argument that “乔丹” was already well-known and associated with him personally at the time Qiaodan Sports filed its trademarks.

But the highest court in China today ruled that in fact “乔丹” was well-known and associated with Michael Jordan personally, and that therefore Qiaodan Sports’ trademark registrations for “乔丹” should be invalidated. I have not seen the decision yet but from what has been reported in the Chinese media, the decision does not include any rationale; it just announces the outcome, leaving us to draw our own conclusions.

It’s tempting to see this decision as a harbinger of better times for foreign companies seeking to protect their brand in China. Particularly in light of the recent decision in favor of Donald Trump that similarly recognized the word “Trump” as being well-known. But I would be cautious about taking that view, for several reasons.

First, this decision and the Trump decision were for trademarks that were associated with a person’s name. For some time now, Chinese courts have been more likely to protect a trademark that is a person’s name (versus a random company name). Even a few years ago, Jordan would have had no trouble invalidating a trademark squatter’s application for “Michael Jordan.”

Second, Jordan only won a partial victory. Although the court found “乔丹” was well known and associated with Michael Jordan, it also found that “Qiaodan” was not. It’s difficult to rationalize the distinction. Presumably the court determined that (1) Jordan is too common a name to register as a trademark and “Qiaodan” is the standard pinyin transliteration for that name, and/or (2) any number of Chinese characters could be put together to form “Qiaodan” and therefore the connection was too tenuous. But these arguments are rather flimsy; if you look in a Chinese dictionary, the only word that the pinyin “Qiaodan” resolves to is “乔丹,” which has a single meaning: the name “Jordan.” Why grant protection to “乔丹” but not “Qiaodan”?

Third, this decision was decided on narrow grounds. Though the court ultimately accepted the argument that “乔丹” was well known and associated with Michael Jordan, it rejected his argument that Qiaodan’s registrations were “detrimental to socialist morals or customs, or having other unhealthy influences” or acquired by “improper means.”

Fourth, this decision is anomalous under current China trademark practice. The vast majority of Chinese trademark decisions are still coming out in favor of trademark squatters, and it is all but impossible to prove that a mark filed by a trademark squatter was well-known in China at the time of the application. It’s hard not to share the cynical view that something else is going on below the surface here. But maybe it’s as simple as that the case was heard in front of a sympathetic chief judge.

The Supreme People’s Court’s decision is final and cannot be appealed further. So while Qiaodan Sports can no longer use “乔丹” on its goods, it can continue using “Qiaodan” for as long as it wants, without threat of further interference. Jordan may be claiming victory in the press, but he can’t be happy that Qiaodan Sports will get to use “his” name forever.

Because this decision was so unexpected, the immediate consequence is to introduce even more uncertainty to the trademark registration process. Probably many more owners of allegedly “well-known” marks will be encouraged to begin invalidation proceedings in China. I can’t say I blame them, but it’s not much of a strategy. The only realistic way to establish trademark rights in China is to file a trademark application in China.

China Trade Dress Law
Do you know the store? Is it Hong Kong or New York?

Close your eyes, and imagine that when you open them you have been magically transported to another country and you are inside a Starbucks. How do you know you’re in a Starbucks? Even if you’re not this guy, you could probably tell where you are without seeing the word “Starbucks” or the mermaid logo. Would you even know that you were in a different country? Probably not – and that’s exactly how Starbucks wants it. A Starbucks coffee shop has a certain look and feel, a “know it when you see it” gestalt that is easily and immediately identifiable.

The look and feel of products or services – including product packaging and design, the GUI of a website or software application, and the layout and design of a store – generally fall under the rubric of “trade dress.” In the United States, trade dress is considered a symbol or device under trademark law, and can be registered and enforced just like any other trademark. And you better believe Starbucks enforces its trade dress rights.

In China, trade dress is not well defined and not given specific protection as such. Conceptually, trade dress in China incorporates IP elements that don’t fit neatly under the rubric of trademark, copyright, or patent, and to the extent trade dress is protected in China, it is via China’s Anti-Unfair Competition Law (AUCL). However, insofar as it applies to trade dress, the AUCL is not particularly strong, only applies to “famous” products and services, and doesn’t have a mechanism for registration. In other words, you can only enforce trade dress rights by taking administrative or legal action, and if you don’t have a famous product or service you probably shouldn’t bother.

However, a couple recent judicial decisions in China provide a glimmer of hope. In 2015, Stihl, a leading manufacturer of power tools, was deemed to have trade dress protection for its distinctive orange-and-grey color scheme. (A Hangzhou machinery company had made exact copies of several Stihl chainsaws, including the color scheme but excluding the “Stihl” trademark.) And earlier this year, Activision Blizzard was awarded trade dress protection for the look and feel of World of Warcraft, including such elements as character names and designs, equipment icons, maps, and game interface. (An online Chinese game called Everyone WarCraft: War of Draenor had copied much of World of Warcraft’s look and feel.)

A draft amendment to the AUCL was published on February 25, 2016. Most of the commentary to date has focused on the changes that amendment would make to the antitrust and anti-monopoly language, but it also could expand the scope of what could be covered under trade dress. It appears that the trend in China is toward more trade dress protection.

Even with these positive steps, trade dress protection in China should be seen as complementary to the registrable forms of IP protection like trademarks, copyrights, and patents. You may not be able to register the layout of your China retail store, but you can register trademarks in China for color combinations (as Stihl eventually did) and character names and you can register copyrights for product labels, video game characters, icons, and maps and you can register design patents for the outward appearance of products.

Bottom Line: Trade dress protection exists in China, but only sort of. Relying on China trade dress protections is not advised. The way to protect your intellectual property in and from China is by registering trademarks, copyrights and patents there.

China trademark registrationSusan Finder’s estimable Supreme People’s Court Monitor wrote yesterday about a fascinating Donald Trump trademark matter in China.

Back in December 7, 2006, Trump filed a China trademark application for the word mark “TRUMP” in Class 37, covering services such as building construction, repair, and installation services. Unfortunately for Trump, on November 24, 2006, an individual named Dong Wei (董伟) had filed his own application for “TRUMP” in class 37 covering services such as building construction supervision, construction, demolition, road building, mining, and drilling.

Trump’s application was rejected by the Chinese Trademark Office (CTMO) with respect to the goods similar to those on Dong Wei’s application. Trump then appealed to the Trademark Review and Adjudication Board (TRAB) and lost. He then appealed to the Beijing Intermediate People’s Court and lost again. He then appealed to the Beijing Higher People’s Court, and in May 2015 he lost yet again. Having exhausted his options in court, Trump made a decision familiar to fans of reality television: he fired his trademark attorneys.

Though Trump’s attorneys had contended that “TRUMP” was a well-known mark, the Beijing Higher People’s Court did not even address this argument. It was a simple decision based on a simple principle: Dong Wei filed his application first, and Dong Wei’s trademark was still valid.

But that’s not the end of the story. At the same time as he appealed the rejection of his application, Trump pursued a parallel strategy seeking to invalidate Dong Wei’s trademark. As soon as Dong Wei’s trademark application was published in the Trademark Gazette, Trump filed an opposition. That opposition was rejected. Trump then filed an appeal to the rejection of his opposition. That appeal was denied by the TRAB in April 2015. (It appears likely that the Beijing Higher People’s Court was waiting for the results of this appeal before issuing their decision.)

At this point, Trump had two main options if he still wanted to contest Dong Wei’s mark. He could appeal the TRAB’s decision (with regard to his opposition to Dong Wei’s mark) to the Beijing IP Court. Or he could accept the results of the TRAB’s decision, let Dong Wei’s mark proceed to registration, and then attempt to invalidate Dong Wei’s registered trademark. Trump went with the latter option, which is an odd choice because he would be making the same arguments before the same appellate board.

And then something surprising happened. The TRAB ruled in Trump’s favor, and invalidated Dong Wei’s mark with respect to everything but mining and drilling. The invalidation decision is not publicly available, so we can only extrapolate from the few facts that are known. The TRAB published its invalidation result in September 2016, which means that the decision itself was probably made in June or July 2016. Trump was apparently able to show, at long last, that “TRUMP” was a well-known mark, but only with respect to the more standard real estate and construction services. Why now? Was Trump able to provide new evidence showing that the “TRUMP” name was well-known in 2006? Without knowing more, this decision seems at odds with the usual standards regarding well-known marks in China. It is hard to escape the feeling that the media attention given to Trump in China over the past few months affected the TRAB’s decision.

Hedging his bets even further, Trump had filed a new, separate trademark application in 2014 for similar services as those covered in Dong Wei’s mark. This 2014 application effectively took the place of Trump’s 2006 application. (Trump’s attorneys presumably thought — correctly — that the 2006 application might be rejected before the invalidation proceeding for Dong Wei’s mark was complete, and wanted to have another trademark ready to go.) Now, with Dong Wei’s mark invalidated, Trump’s new mark has been published in the Trademark Gazette. Unless someone files an opposition, the mark will proceed to registration in 3 months.

It would have been a different situation if Dong Wei filed his application today. First, Trump is undeniably well-known in China. Second, China has an informal rule against registering the names of American presidents as trademarks: a quick review of the CTMO database indicates that applications for 克林顿 (the official Chinese translation of “Clinton”), Clinton, Obama, 奥巴马 (the official Chinese translation of “Obama”), and even 希拉里 (the official Chinese translation of “Hillary”) have been routinely rejected by the CTMO. The difference with Trump is that he was a businessman for years before turning to politics.

As Mark Cohen’s China IPR blog has pointed out, Dong Wei is hardly the only person in China to file TRUMP-related trademark applications in China. A quick CTMO search reveals dozens of applications for “TRUMP,” “TRUMP TOWER,” “TRUMP PLAZA,” and so forth, as well as innumerable Chinese variations. Some of those have been filed by Donald Trump himself, but he’s fighting a rearguard action. If he cared about protecting his name – and his willingness to litigate over these issues shows that he does – he should have taken the Starbucks approach and filed applications in every class covering every subclass. Maybe he’ll do that now.

It will be interesting to see what the CTMO and TRAB do with subsequent oppositions and invalidation proceedings brought by Trump. I can only assume such proceedings will be legion. Even if most (or all) of the third-party “TRUMP” trademarks are invalidated due to Trump’s status as the president-elect, think of all the time, effort, and money that Trump expended to get this far.

Once again, the moral of this China trademark story is: register your trademark now, before someone else does it for you. Unless you plan on being elected President of the United States.