October 22, 2017

October 20, 2017

Subscribe to Latest Legal News and Analysis

Summer's Here, Don't Get Burned!

In May of 2014, we discussed the prevalence of trademark and domain name scams, and offered tips on how to avoid being duped by fake service offerings. Unfortunately, scammers have not  faded into the woodwork in the intervening two years, but have become craftier, more aggressive, and even more malicious in seeking to profit from unsuspecting trademark owners.

These types of scams currently fall into the following four categories:

  1. "Official" Letters From the U.S. Patent and Trademark Office, or Other Trademark Agency

Official letters scams are designed to mimic official USPTO and other trademark agency (such as EUIPO) correspondence, often incorporating wording such as "US/United States," "Patent and Trademark Office," or even a seal.

This type of scam has become so prevalent that the USPTO is sponsoring a new Fraudulent Solicitations Program to help combat the problem, and has posted several real-world examples of solicitation letters on their website to help users identify this type of scam.

These types of scams may include statements about the need for the applicant to pay additional fees to move a mark towards registration.  They may provide a phone number to call to leave a credit card number, or include an official-looking form to complete with payment information, and include a return addressed envelope with a P.O. Box.

Perhaps the most telling sign of a scam is that the USPTO and other trademark offices will not communicate directly with an applicant or registrant where there is counsel of record. If you receive any correspondence from some type of Trademark Office Agency, either via email or snail mail, look carefully for the following information to confirm that it is actually official USPTO communication:

  • reference to "United States Patent and Trademark Office" all together (not just U.S. or United States, or PTO, for example)

  • sent via a USPTO address – either the Alexandria, Virginia street address, or from an email address  "@uspto.gov."

In any event, we recommend forwarding a copy of the communication to trademark counsel for verification in order to avoid any potential fraud, credit/identity theft, or registration delays   

2. Solicitations Offering to Provide Legal Services to Meet USPTO Requirements

Because all USPTO application and registration data is available online, scammers can use these records to determine the prosecution history of a mark and what might be due next.  While not all letters offering legal assistance are technically scams (in that some may provide some form of actual services), these offers often fulfill only part of the USPTO requirements, and usually bundle USPTO and service fees as to exaggerate the true cost of filing

3. Registry, Foreign Filing, or Watching Services

Other common scams include offering to list a trademark in a trademark “registry” (which do not exist), to file for the mark in foreign countries, or to provide some sort of watching service.   

  4. Warnings About International Domain Name Registrations

Finally, perhaps the most common type of scam involves an email communication from an Asian-based consulting company purporting to notify the trademark holder that another entity is seeking to register the client’s trademark or business name as a domain name in a foreign country.  The email provides the brand owner with a short period of time in which to secure the domain name for its own.  These notifications are virtually all scams or, at best, solicitations to purchase unnecessary domain names. 

© 2017 Sterne Kessler

TRENDING LEGAL ANALYSIS


About this Author

Associate

Ms. Dalier is an associate in the Trademark, Advertising, and Anti-Counterfeiting Practice.  She focuses her practice on trademark portfolio management, prosecution, and matters before the Trademark Trial and Appeal Board. She counsels clients on mark selection, clearance, and on the creation and maintenance of trademark rights worldwide.  She conducts due diligence reviews of intellectual property assets, and works with clients on domain name monitoring and trademark enforcement. With more than ten years of experience in trademark law, she is well versed in all aspects...

202.772.8633
Monica Riva Talley, Trademark Attorney, Sterne Kessler, Law Firm
Director

Monica Talley brings more than 17 years of experience protecting some of the world's most recognizable brands to her role as a Director in the firm’s Trademark practice.  Ms. Talley specializes in strategic trademark counseling and portfolio management, developing anti-counterfeiting solutions and strategies, and trademark enforcement. 

Ranked as one of the leading trademark prosecution and strategy attorneys in Washington, DC, Ms. Talley is particularly noted for her global brand protection and commercialization strategies, and is lauded by clients for utilizing “her broad IP savvy to procure fantastic short and long-term results” (World Trademark Review 1000, 2012 and 2013).

202-772-8688