Managing Partner
Amy Hsiao
Beijing (China)
Taipei (Taiwan)
About
China has unique trademark laws and procedures. The danger for many companies doing business in the ‘Middle Kingdom’ is that “you don’t know what you don’t know.” Known for her talent to spot issues that appear harmless in Western legal systems, Amy brings a wide array of IP experience and strong language and cultural fluencies to the table. Put simply, she gives peace of mind when it comes to IP in China.
Amy focuses her practice on advising Western companies on trademark, copyright, and international business transactions in China and other Asian countries. She has pursued cases through all levels of China’s system and has achieved over 500+ opposition/invalidation/nonuse wins. She has worked with policy makers from the U.S. and Europe on trademark arbitrations, criminal counterfeit seizures, and product recalls. She often assumes the role of a business advisor because of her ability to articulate differences between Eastern and Western systems and to turn large volumes of raw data into meaningful, actionable branding strategies.
Amy sipped hot tea in August in Shanghai with AIC and PSB officials to push for raid actions. She has worked through freezing blizzards in Beijing to win landmark cases and set important precedents in China’s unfair competition law. Because of her wide array of IP experience, she was selected by China’s former Deputy Secretary-General of China’s Trademark Association as the only Western attorney to work on China’s very first trademark textbook for the Western world. She is a unique blend of both Western and Chinese cultures.
Amy is also an outspoken advocate against counterfeit goods and has participated in numerous raids in PRC China and throughout Asia. In 2022, Amy was appointed by the U.S. Secretary of Commerce to serve as a member of the USPTO Trademark Public Advisory Committee (TPAC). The Committee is designed to advise the Secretary of Commerce of Intellectual Property and Director of the USPTO on matters relating to policies and goals of the Trademark Organization (three-year term: 2022-2025).
Amy is a fantastic attorney, savvy business advisor, and true IP thought leader. I could not be more pleased with the services she and her team provided during my time as head of global trademarks for a Fortune 500 Silicon Valley tech company.
Amy’s work ethic is impeccable. She is a brilliant strategic thinker with a rare understanding of the realities of international business. She is also sensitive to cost concerns and offers top-notch legal services at very reasonable prices. As a people manager myself, I appreciate how she manages her team compassionately and fairly, while always maintaining high standards of client service and work product. I am delighted to highly recommend Amy and her team!
Highlights
- Obtained 1,000+ wins in trademark oppositions, invalidations and nonuse actions for clients in China alone;
- Cleared 300+ trademarks in both the English and Chinese languages;
- Advised Fortune 100 companies about sourcing, manufacturing and retailing across Asia;
- Designed and successfully executed anti-counterfeiting programs from Korea to India for clients in the following industries: sports & fitness, hospitality, fashion, consumer electronics, logistics, and semiconductors;
- Over 10 years of large U.S. law firm experience in managing international trademark litigations and disputes, anticounterfeiting programs (including civil and criminal actions), online take-downs (Alibaba, Taobao, FB, IG, WeChat etc.), and obtaining official recognition of well-known trademarks;
- Specialized in intellectual property, technology transaction, cross-border disputes across 48 countries in Asia, with extensive negotiation/arbitration/litigation experience in China, Hong Kong, Taiwan, Korea, Japan, Indonesia, the Philippines and India.
Recognitions
- WTR 1000 Recommended Trademark Individual every year from 2019 to 2024
- 2022: Appointed by the U.S. Secretary of Commerce and currently serves as a member of the USPTO Trademark Public Advisory Committee (TPAC) which advises the Under Secretary of Commerce for Intellectual Property and the Director of the USPTO on matters relating to the policies, goals, performance, budget, and user fees of the USPTO (12.2022-12.2025).
- 2022: Quoted by World Trademark Review on China’s updated trademark timelines
- 2021: Named in the 2021 edition of WTR 1000, describing Amy and her team’s work as follows: “For a US-based expert on Chinese trademark law, look no further than Amy Hsiao. [She] has tried and tested strategies at the ready for brand management and enforcement in Greater China.”;
- 2021: Selected as a member of the Expert Think-Tank at the Beijing AMR
- 2015: Selected by China’s former Deputy Secretary General of the Trademark Association as the only Western attorney to work on a book involving in-depth analysis of top 26 landmark trademark cases. Published by Wolters Kluwer, the book is viewed as China’s very first trademark textbook for the Western world and described as “the single indispensable source on China Trademark Law.”
Activities
- Member of TPAC (USPTO Trademark Public Advisory Committee) (12.2022-Present)
- ABA Anticounterfeiting and Privacy Committee (Co-chair, 2022-Present)
- ABA China IP Committee (Vice Chair, 2019-2020) (Chair, 2021-2022)
- ABA International Special IP Task Force (2019 – 2021)
- INTA Committee Member (Enforcement Division) (2018-2019)
- INTA Committee Member (Public and Media Relations Committee) (2016-2017)
- INTA Committee Member (China Subcommittee) (2014-2015)
- China Subject Matter Expert at Read Write, a US tech blog with 6+ million readership (2015-2016)
Admissions
- Georgia, 2007
- New York, 2010
- Admitted to Supreme Court of the United States, 2023
Education
- National Taiwan Normal University, 2002, Magna Cum Laude
- University of Georgia, School of Law, 2007, Cum Laude
Speaking Engagements & Publications
2023
- Feb 23rd – Invited to speak at ICLE Michigan: “Dangerous Fakes: Enforcement and Anti-Counterfeiting Strategies in China”
- Jun 29 – Invited to speak at Strafford LIVE CLE Video Webinar “New Chinese Trademark Law Amendments: Impact on U.S. Companies’ Abilities to Establish and Enforce Rights in China“
- Aug 2 – Invited to speak at PLI Webinar “Global Trademark Strategies: Key Considerations and Unique Challenges in China”
- Sep 13 – Invited to speak at ABA / Alibaba Webinar “Anticounterfeiting and copyright developments in the U.S., Europe and China” with USPTO copyright and EU examiners
- Oct 30 – Invited to speak at USPTO China Roadshow at Green Bay Wisconsin “Strategies for Protecting Intellectual Property regarding China: What Green Bay and Wisconsin Businesses Need to Know” with leading experts in the field
- Nov 8 – Invited to speak at Thompson Reuters Live Webinar with Amazon in-house trademark counsel: “Global Trademark Strategies: Key Considerations and Unique Challenges in China”
2022
- Dec 15th – Invited to speak at UPSTO China IP Roadshow (Greenville, SC): “Strategies for IP Protection in China”
- Sept 21st – Invited to speak at INTA Event Focusing on Metaverse Trademarks
- Sept 13th – Invited to speak at IPWatchDog LIVE 2022 Focusing on “The Truth Behind Counterfeit Products”
2021
- Oct 7th – Invited to speak at 46th Annual Intellectual Property Law Institute
- Sept 28th – Invited to speak at China’s Fashion IP Conference, with over 200,000 live online attendees
- Jun 29th – Invited to speak at International Design Rights Workshop Co-hosted by Alibaba and IACC
- Jun 3rd – Invited to speak at 19th Annual Rocky Mountain Intellectual Property & Technology Law Institute, discussing China Enforcement Hot Topics
- Jun 3rd Publication: “Protecting Color Trademarks in Asia”
- Apr 13th – Invited to speak at ABA 2021 Spring Meeting, discussing Key Features of China’s Advertising Law
- Mar 31st – Invited to speak on IP at Alibaba SME Committee
- Mar 12th – Invited to speak at ABA Fashion Committee on The Five Most Common Mistakes Western Brands Make When Marketing in China
- Oct 21st Publication: “Red Light, Green Light: How Fast Are Brands Being Copied in China?”
2018
English
- Hsiao, Amy, and Christopher Shen. “Protecting the Looks of Products in China.” World Trademark Review, 2 Jan. 2018.
- Hsiao, Amy, and Samuel Speed. “A Solution To China’s Counterfeiting Problem.” Law360 – Expert Analysis, 3 Apr. 2018.
- Multiple publications on LinkedIn Pulse, China Trademark Blog. Select outlined below:
- Hsiao, Amy. “An Interesting Solution to China’s Counterfeiting Problem.” 1 May 2018.
- Hsiao, Amy. “East Meets West – A Trademark Practice in the US & China!” 21 Feb. 2018.
- Hsiao, Amy. “Expect Your Trademarks to Move REALLY Fast in China This Year!” 18 Apr. 2018.
- Hsiao, Amy. “Key Policy Updates from Alibaba That Benefit Brand-Owners.” 15 Apr. 2018.
- Hsiao, Amy. “Significant Changes to China’s Entire Governmental Structure!” 19 Mar. 2018.
- Hsiao, Amy. “Well-Known Trademark in China?!” 18 Feb. 2018.
Mandarin Chinese
- 美国加征25%关税对中国企业的「三大影响」！ 知产力 13 Jun. 2018.
2016-2017
English
- Wang, Ze, et al. Landmark Trademark Cases in China: An in-Depth Analysis. Kluwer Law International, 2017. “The single indispensable source on China.”
- Hsiao, Amy. “Takeaways from Trump’s Recent Trademark Victories in China.” Law360 – Expert Analysis, 3 Apr. 2017.
- Hsiao, Amy. “Takeaways from Ivanka Trump’s TM Approval in China.” Law360, 12 May. 2017.
- Hsiao, Amy. “Regulations by China Supreme People’s Court Regarding the Administrative Trademark Litigations.” EEAS, 10 Jan. 2017.
- Multiple publications on LinkedIn Pulse, China Trademark Blog. Select outlined below:
- Hsiao, Amy. “Possible Punitive Damages against Trademark Infringement in China.” 21 Mar. 2017.
- Hsiao, Amy. “Good News! Less Legal Expense in China.” 30 Mar. 2017.
- Hsiao, Amy. “China’s New Credit System: Using Public Shaming to Deter Copycats & Serial Infringers.” 4 Apr. 2017.
- Hsiao, Amy. “Finally, Prison Time for Counterfeiters in China!.” 11 Apr. 2017.
- Hsiao, Amy. “How Fast is the Speed in China? 2000+ Views in 24 Hours!.” 23 Apr. 2017.
- Hsiao, Amy. “How to Know Whether Your China Experts are Indeed Experts or Simply People Who Travel to China in First Class (With Your Money)?” 26 Apr. 2017.
- Hsiao, Amy. “Top 5 Cases Picked by China’s Authorities as A Roadmap to Its Trademark System.” 27 Apr. 2017.
- Hsiao, Amy. “How to Fight Counterfeits in China? What’s the Exact Dollar to Make a Case Criminal?.” 7 May. 2017.
- Hsiao, Amy. “What is the Real Breakthrough Regarding the Recent Criminal Trademark Cases in China?.” 12 May. 2017.
- Hsiao, Amy. “Where to Majority of China’s IP Criminal Cases Come From?.” 19 May. 2017.
- Hsiao, Amy. “Have You Received the Scam Email from China (Yet)?” 6 Jun. 2017.
- Hsiao, Amy. “What Are the Top Three Products China’s Infringers Favor?” 10 Jul. 2017.
Mandarin Chinese
- Hsiao, Amy. “Top Three Key Issues to Bear in Mind When Seeking Trademark Protection in the US.” 知产力,为创新聚合知识产权解决方案, Zhichanli, 26 Feb. 2017.
- Hsiao, Amy. “Top 10 Tips to Quickly Understand the Trademark System in the US.” 知产力,为创新聚合知识产权解决方案, Zhichanli, 21 Apr. 2017.
- Hsiao, Amy. “Three Most Frequently Asked Questions When Seeking Trademark Registrations in the US.” 知产力,为创新聚合知识产权解决方案, Zhichanli, 29 Jun. 2017.
- 《一位美国律师的来信：中国企业在美国申请商标的三大误区》 知产力 9 Dec. 2016.
- 《美国律师的第二封来信：企业须特别关注美国商标项目描述之三大原因》知产力 20 Jan. 2017.
- 《美国律师的第三封来信：10个重点帮您快速了解美国商标法》知产力 21 Apr. 2017.
- 《美国律师的第四封来信：美国商标制度下关于使用权的常见三大问题》 知产力 29 Jun. 2017.
- Hsiao, Amy, and Ashley Zito.《美国知识产权诉讼不简单，这3大重点需注意》知产力 23 Oct. 2017.
- Hsiao, Amy ,and Ashley Zito.《美国律师的第五封来信：美国商标制度下关于使用权有哪些问题》知产力 30 Oct. 2017.
- Hsiao, Amy, and Carl Steele.《美国律师的第六封来信：英国脱欧影响中国企业商标的十大问题 知产力 21 Nov. 2017.