Sullivan & Worcester
Trademark frauds are on the increase, again. Since we first published this advisory five years ago, scammers have refined their tactics and are now using advanced technology to send misleading invoices and solicitations related to trademarks. Many clients report receiving a steady stream of these deceptive communications.
Every brand owner–from individuals and startups to Fortune 500 companies–is a potential target for trademark scammers and must be vigilant to guard against them. This advisory offers an overview of common misleading notices and provides five ultimate tips to help you navigate these traps effectively.
Types of Scams
Private companies unaffiliated with the United States Patent and Trademark Office (USPTO), the official governmental registry for trademarks in the United States, are exploiting publicly available USPTO data to send deceptive trademark solicitations via mail, email, and phone to trademark owners. These entities go to great lengths to create a facade of legitimacy while engaging in misleading practices.
For example, these companies may purport to offer legal services, such as assistance with trademark maintenance, office action responses or renewal filings. Other companies may offer to register marks in non-government databases. Many solicitations appear official, demanding immediate action and payment, and the companies behind these schemes often operate under names and acronyms that imply governmental affiliation, using terms like “Trademark,” “Registration,” “Office,” and “Agency.” Yet, the formal appearance of an invoice or notice does not guarantee its legitimacy.
We are now witnessing new and sophisticated types of scams where fraudsters pose as service providers, such as law firms or trademark monitoring agencies. It is alarming to hear that clients are receiving notices from nonexistent law firms or attorneys. Scammers also spoof phone numbers and falsely claim to be affiliated with the USPTO. They then request payment or sensitive information through phone calls or texts. Scammers can also send out fraudulent email chains that pretend to be from examining lawyers, claiming that you owe additional fees or filings. They may offer to handle these fake tasks for you. While these emails may seem official at first glance, remember that legitimate USPTO communications will always come from an address ending in “@uspto.gov.”
Often, these solicitations create a sense of urgency on the part of the trademark owner. These emails often create a sense of urgency on the part of the trademark owner. The solicitations often use dates that are wrong. We have seen scammers say that maintenance filings were due a full year before the deadlines. This implies that the first of the one-year period for maintenance filings was the deadline. Trademark owners may be tempted to pay the fees, out of concern for these notifications. However, brand owners are never required to use any service or respond to payment demands solicited by these agencies to maintain the validity of their marks.
Trademark owners with international portfolios of marks must be especially attuned to the issue of misleading solicitations. This is a global problem, and our colleagues around the world report a significant increase in these notifications. This global issue affects U.S. clients, who may be less familiar with foreign registration requirements.
Several major official registries, including the USPTO, the European Union Intellectual Property Office (EUIPO), and the World Intellectual Property Office (WIPO), have compiled databases of known scams to warn trademark owners. Though not exhaustive, as these unofficial agencies often change their names and addresses, the links provide a useful overview of the type and scope of misleading notices currently facing brand owners.
Unfortunately, there has been little government enforcement against the purveyors of these misleading notices, who have continued to operate unabated. As a result, trademark owners must remain vigilant.
The Anatomy of a Scam: How to Identify Fraudulent Notices
Misleading trademark solicitations come in many forms, but they tend to have a few common characteristics as outlined below:
Here are five tips for dealing with an unexpected notification, solicitation or invoice relating to your trademarks:
1. Here are five tips for dealing with unexpected notifications, solicitations or invoices relating to your trademarks:
1. It’s understandable that you may feel compelled by the scam to make a payment immediately. It’s understandable. These scams are designed to create an urgency, and make the recipient believe that by making a financial payment, they are protecting the company’s interest. As a best practice we recommend you take a breath, wait a moment, and then refer to Tip 2.
2. Then, evaluate the notice. Is the notice containing any of the red-flags discussed above? If so, does the notice appear on the USPTO list of fraudulent or misleading solicitations? If so, ignore the notice.
3. Contact Your Trademark Lawyer. Should you have any questions regarding the validity of a trademark invoice or solicitation, please do not hesitate to call your trademark lawyer at Sullivan. We can usually tell right away if a notice is genuine or fraudulent. All legitimate USPTO trademark fees will be stated on our firm’s invoices and are not billed separately.
4. Spread the word. As a member of the legal or marketing department of your company, you should alert any colleagues who may receive such notices. This is especially important for those in the accounting and finance departments who are responsible for the payment of invoices. Please feel free to share this alert.
5. File a Complaint. If you wish to file a formal complaint with government authorities or agencies that protect consumers, please do so. USPTO can be contacted at TMScams@uspto.gov to report suspicious activity. You can also file an online complaint with the Federal Trade Commission, submit a report with the Better Business Bureau, or, if you are a victim of a crime file a complaint at the FBI’s Internet Crime Complaint Center.
