The U.S. Patent and Trademark Office (USPTO) has issued warnings about the rising incidences of trademark scams. As a current or prospective trademark owner, you should be aware of the danger so that you can avoid falling victim.
What is the scam?
Trademark registrations are a matter of public record. This public availability is generally a good thing: it allows other potential users to determine in advance if their contemplated mark is already in use. This knowledge can streamline a new registration where appropriate, as well as help avoid unintentional infringement where the mark is already in use. But the ready access to information—including to whom the trademark was issued, when the mark was issued, and when it is due for renewals—provides an opportunity for unscrupulous parties to try to leverage this publicly available information to the detriment of the rightful trademark owners.
The USPTO informs us that scammers have been using this information to send solicitations to trademark applicants and owners. Often, these solicitations appear official. Some solicitations offer what appear to be legitimate services such as responding to Office Actions. Other solicitations offer what appears to be a simple method of paying fees. Still other solicitations offer entirely fraudulent services, such as offering to register your mark on a “private registry” that does not exist or offer any legal protection to your mark. And, of course, solicitations come with a request for fees for their services in addition to any (often inflated) fees due the USPTO.
However, money sent to scammers may not be appropriately forwarded to the USPTO, or the services offered may be incompetent—which can result in serious consequences to your mark, including abandonment!
How do you avoid falling victim?
The first thing to know is that official correspondence about a trademark application or registration will be from the “United States Patent and Trademark Office” in Alexandria, Virginia. All official emails will be from the domain “@uspto.gov.” So step one in avoiding becoming a victim is verifying the correspondence is real. Besides verifying the domain of email, you can look up your mark in the Trademark Electronic Search System—also known as TESS. There you will find the current status of your mark, as well as any documentation (including correspondence) from the USPTO that relates to your mark. If the solicitation you received is not shown in the official file, it is not an official correspondence.
The second thing to know is that the USPTO does not require trademark applicants or owners to use any specific service. If the solicitation implies that the company is the only or preferred method to fulfill requirements at the USPTO, it is a scam. While trademark owners are allowed to use representatives—including attorneys—to interact with the USPTO, the use of any particular representative is not required. And there is no preferential treatment available to any owner or applicant by virtue of who they use to interact with the USPTO.
Finally, the USPTO has made the following request regarding trademark scams: If you receive a trademark-related offer or notice that you believe is misleading, file a consumer complaint with the Federal Trade Commission (FTC) immediately. Keep the suspected offer or notice as well as its envelope. Any or all of these may be requested later. Although the FTC does not resolve individual consumer complaints, as the nation's consumer protection agency it may begin investigations and prosecutions based on widespread complaints about particular companies or business practices. The USPTO also encourages you to contact your state consumer protection authorities. Many states, if not all, have the authority to issue investigative subpoenas and file complaints against companies engaged in misleading practices directed toward state residents.
We make avoiding scams easier
Henry Law stays on top of the deadlines and requirements of our trademark clients. We will let you know when actions or fees are required, and we can help you evaluate any correspondence you receive in relation to your trademark. But regardless of whether you choose to use our services or not, it is imperative that you view any correspondence related to your mark with a critical eye before accepting offers or paying fees.