USPTO Announces Webinar on Avoiding Trademark Scams

by Christina Frangiosa

On February 27, 2024, the USPTO announced a new webinar on avoiding scams directed to trademark owners, called “Trademark practitioners:  Avoid attorney scams and bad behavior” – to be held March 19, 2024 from 2pm ET to 3:30pm ET.  There’s no cost to attend, but you do need to register in advance:  https://www.uspto.gov/about-us/events/trademark-practitioners-avoid-attorney-scams-and-bad-behavior.

Even though the session appears to be directed specifically to “trademark practitioners” (i.e., outside trademark attorneys, their paralegals, in-house trademark attorneys and their paralegals, etc.), I would expect this session to also be relevant for corporate or business attorneys (in private practice or in-house), business owners and their compliance staff, and any other trademark owner interested in learning more.

ORIGINAL SCAM

These scams are definitely on the rise. Years ago, they would appear in the form of paper solicitations sent by an entity with a very similar name to the US Patent and Trademark Office (USPTO), but would show an address in Philadelphia, New York or Washington D.C. – but remember that the official address for the USPTO is in Alexandria, VA.  The forms were designed to look like the official notices issued by the UPSTO, particularly notices of upcoming deadlines to renew registered trademarks and to pay any required maintenance fees.  (Examples of these letters can be seen on a website maintained by the USPTO.)

These notices would contain what appeared to be standard form data from the USPTO’s database – but further inspection would reveal that the details would be wrong.  Specifically, while they would typically identify the correct owner, correct spelling and correct registration number of a trademark currently on the Register, the deadlines by which maintenance filings were due would be wrong, and sometimes would be a full year or more before the actual USPTO deadlines.  The fees to be paid in response to these solicitations were also extortionately high.   These letters also conveyed a sense of urgency, perhaps discouraging recipients from undertaking sufficient diligence to realize it was a scam.  Notwithstanding the errors, many trademark owners were tricked into paying these invoices, believing that they were maintaining their registrations and then still having to pay the legitimate (and lower) fees a year or so later when the USPTO’s deadlines actually occurred.

PRIOR USPTO WEBINARS

These kinds of paper solicitations prompted the USPTO to host a public roundtable in 2017 exposing the scams and seeking to educate both trademark owners and their attorneys about avoiding them.  (See also the USPTO’s summary of the event.)   Both the USPTO and WIPO maintain websites showing examples of common fraudulent solicitations to help increase public awareness.

RECENT SCAMS

Since then, these scams have morphed into lots of different email variations, including emails sent to the email addresses of trademark owners (available publicly in individual trademark records on the USPTO’s database) that have many of the same features of those paper solicitations, including incorrect maintenance deadlines and excessively high fees allegedly “due” immediately.  The USPTO sponsored another webinar in 2023 about these scams and what to do if you were fooled by them.

A second form of these emailed solicitations appear to be a directed message from a supposed lawyer, alleging that the lawyer had received an application from a potential client that might infringe the recipient’s trademarks, and the recipient should contact the lawyer to stake out their claim.  There’s usually an implicit threat to those emails, along the lines of “if we don’t hear from you, we will be forced to let these newcomers file their application for your mark”.  Note that only the USPTO can review applications and grant federal trademark registrations and there is already an opposition procedure in place, during which anyone with prior or competing rights can object to any new application once it has been published.  Many of the solicitations in this second category do not contain monetary demands, but it is reasonable to expect that there has to be some monetary benefit to the sender for them to bother reaching out.

A third variation of these types of solicitations are the websites and advertising emails from “filing firms” – which are entities set up with a stated goal of helping you file a trademark application at bargain basement prices, but there’s always a catch.  Many of these sites will hype their success rates, the numbers of applications they have successfully registered, and if you dig further, are staffed entirely by non-lawyers and may even be foreign-owned.  Note that under the USPTO’s Rules of Practice, only attorneys licensed in the U.S. are authorized to represent others before the USPTO.  (See also the USPTO’s discussion of the U.S. Counsel Rule that went into effect on August 3, 2019).

A fourth variation of these scams is now coming by phone – and, based on Caller ID data,  seem to originate from the USPTO or its Trademark Assistance Center.  However, if you are represented by an attorney and that attorney is recognized as the correspondent of record on your file, the USPTO should not be reaching out to you directly.  (See 37 C.F.R. § 2.18(a)(2).)  There may be instances where the USPTO will contact you directly, but if they do, they will not ask for personal or payment information, nor will they recommend that you obtain assistance from a “preferred” service or any “partner” organization.  See “How to Spot a Spoofed Call.”   (The USPTO generally will not recommend specific practitioners to help with applications or maintenance of registrations; they may recommend that unrepresented filers obtain SOME assistance by a trademark attorney, but they won’t make a recommendation of WHICH attorney or firm you should hire for that purpose.)

HOW TO SPOT A SCAM

  • Double check the deadlines cited in the emailed notice using the Registration Number for your trademark:   https://tsdr.uspto.gov/ (click on the “Maintenance” tab after your record appears).
  • Look closely at the email associated with the sender of the emailed notice – does it come from the USPTO or a free email service (like Gmail or Hotmail)?
    • USPTO emails will only use a “uspto.gov” domain – not a *.com or a *.org domain.
    • For example, many of the official notices from the USPTO will come from [email protected].
  • Beware of solicitations with embedded QR codes.
    • The USPTO does not currently use QR codes.
  • Beware of solicitations by text message or by phone.
    • The USPTO does not send reminder notifications by text message.
    • Bad actors can spoof Caller ID information – see the USPTO’s recommendations for dealing with spoofed calls.
    • Sometimes Examining Attorneys contact the attorney of record by phone, but if you are represented by an attorney, this should not apply to you.  In any event, formal communications with the USPTO are generally handled through its TEAS system.
  • If you get an unsolicited email from an attorney offering to help you with your trademarks, do some additional diligence to understand who is sending the email:
    • Some lawyers have had their identities hijacked by bad actors to use in these scams.  Look carefully at the sender’s email address and then see if there is an attorney associated with the domain that sent the email (name@*.com, for instance).
    • Attorneys are licensed in individual states – many of these states allow you to confirm that an attorney has a valid license to practice in that state through their board of law examiners or attorney licensing boards (although the specific names of these licensing agencies can vary across states).
    • Be cautious of attorneys relying on email addresses originating from unknown or unusual email domains, like [initials][email protected].  These may be originating from foreign filing firms and may be borrowing credentials from U.S. lawyers, and thus may not be legitimately authorized to represent others before the USPTO.
    • Beware of solicitations that appear to come from an attorney, but the sender’s website does not show any attorneys as being associated with that entity.  (Filing firms are not permitted to represent applicants before the USPTO – only licensed US attorneys may do so.)
  • If you are not sure whether the communication you received is legitimate, you can confirm with the USPTO’s Trademark Assistance Center whether the communication came from the USPTO.

USPTO’S ENFORCEMENT EFFORTS

The USPTO recently cracked down on at least one of these “foreign filing firms” and its affiliates, and cancelled all of the pending applications filed by these firms.  (Any filing fees charged by the USPTO at the time the applications were initially filed are not refundable – if you are a trademark owner whose application has been cancelled through this process, the USPTO provided some guidance for proceeding (under “Next steps if your application is terminated”).

In addition, while the USPTO cannot unilaterally cancel registrations that have already issued (without instituting a proceeding like expungement or reexamination), these registrations are still tainted by the process by which they were acquired.  (If you are a trademark owner whose application to register a trademark has been blocked by one of the registrations cited in this Final Order for Sanctions entered against Abtech and its affiliates, you should dig deeper into the cited registration – or consult with a trademark attorney – and see if it’s capable of challenge to clear the way for your own registration to issue.)

For all of these reasons, business owners and their corporate and business attorneys will likely learn something from the USPTO’s upcoming webinar – and it’s worth attending.   

ADDITIONAL RESOURCES

For additional reading in advance of the session, the following may be of interest: