Fraudulent Trademark Solicitations Still Targeting IP Owners
September 19, 2019
To Increase Awareness Regarding Fraudulent Trademark Solicitations, the USPTO Recently Issued Another Warning
Trademark owners and applicants are the target of ongoing scams, including emails that misleadingly suggest certain fees must be paid through the soliciting company. To increase awareness, the U.S. Patent and Trademark Office (USPTO) recently issued another warning regarding fraudulent trademark solicitations that appear to be official correspondence.
Solicitations for Trademark Services
Trademark applicants and owners routinely receive correspondence from the USPTO for legitimate purposes concerning legitimate deadlines and fees. However, they also receive emails from private companies that attempt to profit from the applicants/owners. To avoid being scammed, it is important to know the difference.
As the USPTO notes in its latest warning, private companies often use trademark application and registration information from USPTO databases to mail or email solicitations to trademark applicants and registrants. While the information contained in these solicitations may be accurate (for example, that a certain filing is due to keep a registration active), using these private services is never a requirement of trademark registration.
While some services may be legitimate (i.e. assistance in responding to an office action issued against an application), many others are not, including offering to record trademarks in a “private” registry separate from the USPTO. Some solicitations also purport to be official USPTO correspondence when they are not. As the USPTO warns:
All official correspondence about your trademark application or registration will be from the “United States Patent and Trademark Office” in Alexandria, Virginia, and all emails will be from the domain “@uspto.gov.” Don’t be fooled by company names that sound like government agencies or offers that contain government data. Some company names may include terms like “United States,” “U.S.,” “Trademark,” “Patent,” “Registration,” “Office,” or “Agency.” Some offers and notices may include official government data publicly available from USPTO records, or refer to other government agencies and sections of the U.S. Code.
The USPTO frequently posts warnings on its website with specific details of the scams. At last count, the agency listed nearly 50 different fraudulent trademark solicitations. The agency also recently posted a video to help trademark registrants learn about potentially misleading trademark offers and notices, the types of services they offer, and how to detect them.
Cracking Down on Trademark Scams
The scams continue to proliferate because the USPTO can do little to stop them. As the USPTO emphasizes, it is not an enforcement agency. “We don’t have the legal authority to stop private companies from sending trademark-related offers and notices, nor can we sue or prosecute entities that defraud or attempt to defraud our applicants and registrants,” the agency states on its website. “However, we can raise awareness and work closely with the Department of Justice, the Federal Trade Commission, and the United States Postal Inspection Service to combat the problem.”
The Federal Trade Commission (FTC) can take action, but typically only does so after receiving numerous complaints about the same company. For this reason, if you receive a fraudulent trademark solicitation, it is important to notify the FTC by filing a consumer complaint.
To avoid falling victim to a fraudulent trademark scam, businesses should always read the “fine print” carefully. If you have concerns about a pending trademark registration, application, or upcoming renewal deadline, you can consult an experienced intellectual property attorney. It is also advisable to verify the legitimacy of any trademark solicitation before enrolling in these services or sending any money.
If you have questions, please contact us
If you have any questions or if you would like to discuss the matter further, please contact me, Kristin Garris, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.