USPTO Fights Scams With Federal Trademark Registration

The U.S. Patent and Trademark Office (USPTO) is using federal trademark registration to combat the growing number of scams targeting its users.

The U.S. Patent and Trademark Office (USPTO) is using federal trademark registration to combat the growing number of scams targeting its users. While it is certainly ironic that the USPTO is seeking to register its own trademarks with the USPTO, the more significant takeaway should be the value of obtaining registered trademark protection.

“Like any other brand owner facing infringement by third parties, if we have federal trademark registrations, they will help us take appropriate legal action as needed to protect the USPTO brand from improper use by those trying to impersonate or falsely claim affiliation or endorsement with the USPTO,” David Gooder, Commissioner for Trademarks, wrote in a recent blog post.

Trademark Scams

Misleading solicitations that purport to be from the USPTO and other trademark filing scams continue to be a growing problem. As discussed in prior articles, scammers use publicly available information about trademark holders or applicants, along with intellectual property terms, to create official-looking documents intended to trick individuals and companies into paying erroneous fees and/or signing up for services that they don’t need.

To increase the appearance of legitimacy, fraudsters typically use official-sounding names that resemble the USPTO, by including the terms “United States,” “U.S.,” “Trademark,” “Patent,” “Registration,” “Office,” or “Agency.”  Companies also attempt to make their solicitations mimic the look and format of official government documents. Some scammers have gone so far as to use the actual USPTO name and logo.

While the specific tactics may vary, the intent of the solicitations is to convince the recipient to pay for services. Businesses may be asked to sign up for legal services; trademark monitoring services; recordation with U.S. Customs and Border Protection; and registration with the companies’ own private trademark registry. While some companies may offer legitimate services, such as assistance in responding to an official office action, many attempt to enroll trademark owners in completely fraudulent programs, such as private trademark registries.

Over the past several years, the USPTO has been proactive in taking steps to protect trademark applicants from falling victim to these scams, including alerting users to known scammers by posting a list on the USPTO website, working with law enforcement when appropriate, and sanctioning filers that violate USPTO rules.

USPTO Seeking Federal Registration of Its Marks

On August 5, 2021, the USPTO announced that the Department of Commerce is seeking to further deter scammers by filing for federal registration of the USPTO marks. Applications are for the terms ‘USPTO’ (90865893) and ‘UNITED STATES PATENT AND TRADEMARK OFFICE’ (90866020) and two designs/logos (90866032 and 90866054).

“We recognize the intrigue and irony of filing for federal registration of the USPTO marks with the USPTO,” Commissioner Gooder wrote in his blog post. “It’s a big reason why the Department of Commerce is filing the application on our behalf, just as it has for its other bureaus. As for the process, the USPTO trademark examining attorney will examine the application as he or she does any application, and make his or her own determination.”

Gooder also noted that many other federal agencies own federal trademark registrations, including the Internal Revenue Service, the Environmental Protection Agency, the Food and Drug Administration, the Federal Aviation Administration, the National Aeronautics and Space Administration, the National Oceanic and Atmospheric Administration, the Department of Homeland Security, the National Park Service, and branches of the U.S. military. Ironically, the USPTO seems to be the agency lagging behind.

Finally, Gooder acknowledged that some may question why it took the USPTO so long to obtain federal registration of its marks. “And while some could ask why we didn’t federally register these marks years ago, we realized we require the additional legal protections afforded the owner of a federally registered trademark in light of the rapid increase in sophistication of those unlawfully passing themselves off as the USPTO,” he wrote. “We firmly believe that it’s never too late to do the right thing, and doing everything within our power to protect our trademark customers is the right thing.”

Value of Federal Trademark Registration

Trademark owners can establish rights in a trademark based on the use of the mark in commerce without seeking registration with the USPTO. However, because a federally registered trademark provides certain benefits that make it easier for owners to use and defend their marks, it is generally advisable to take the time to file a formal trademark application. The benefits of federal trademark registration include:

• Public notice of ownership of the mark;
• A legal presumption of ownership and the exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
• The right to bring a lawsuit concerning the trademark in federal court;
• The use of the U.S. registration as a basis to obtain registration in foreign countries;
• The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
• The right to use the federal registration symbol ®;
• Listing in the United States Patent and Trademark Office’s online databases, which will deter others from registering the same or similar mark and prevent infringers from claiming ignorance of the mark; and
• The ability to register one’s brand with the Trademark Clearinghouse, for domain name protection purposes.

Key Takeaway

Trademark registration is one of the best and most cost-effective ways to protect valuable assets, such as your brand, logos, slogans and business name. At Scarinci Hollenbeck, our intellectual property attorneys routinely help businesses register their respective marks, maintain them, and help ensure they remain protected. Contact us today to find out how we can help protect your company.

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, Libby Varghese, or the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.