A record number of applicants are seeking to protect their trademarks by filing applications with the United States Patent and Trademark Office (USPTO). The problem? The rise in trademark applications has left open the doors to an alarming number of fraudulent schemes that target trademark applicants and registrants. As the USPTO battles this new and overwhelming surge in fraud schemes, clients should also be increasingly vigilant to ensure that their information and trademarks are safe from these trademark con artists.

Scammers Around Every Corner

Unfortunately, con artists that target trademark owners are not a new phenomenon. In fact, this is not the firm’s first client alert dedicated to warning clients about the dangers of email scams mimicking the USPTO. And as the client alert in 2020 suggested, “there is no end in sight.”

The USPTO has made strides to protect trademark owners against fraud even though the USPTO has no real law enforcement power. The USPTO established the Register Protection Initiative five years ago to combat the steady increase of scammers and schemes passing through the USPTO. The USPTO has issued sanctions for fraudulent or improper applications to control and deter scammers. In the first few months of 2023 alone, the USPTO issued four times the number of sanctions compared to last year. Despite the USPTO’s valiant efforts, the sheer number of illegal registrations has overwhelmed these efforts.

There are essentially two types of scams that detrimentally affect legitimate trademark owners. The first such scam is based on the sheer number of fraudulent applications being filed each year. For instance, in 2021, a cell of scammers based in China filed more than 2,000 fraudulent trademark applications under the name of a recently deceased American lawyer. A number of other scammers also filed over 2,500 trademark applications using a fictitious attorney as the attorney of record for all those applications. Many such applications are based on fraudulent use claims and contain fraudulent specimens that have been found to be computer generated, as opposed to actual photos showing actual use of the mark on or in connection with the recited goods/services. As a result of the filing of such applications, the examination of all trademark applications has become overly delayed and more and more legitimate applications are being refused due to the presence of registrations issued from such fraudulent applications.

Another common type of scam involves third parties directly soliciting trademark applicants/owners with threats that their trademark application/registration is at risk of abandonment unless additional fees are paid. For example, in 2021, a Latvian national pleaded guilty to mail fraud after an investigation revealed he duped hundreds of trademark owners into sending him more than $4 million dollars worth of “fees” to keep their trademarks from allegedly expiring.

As these types of scams become more targeted, the USPTO and trademark attorneys of record continue to take steps to reduce the risk of owners being duped by such fraudulent actions. In 2022, the USPTO created a mandatory identification verification program for attorneys to ensure that filings were being done legitimately. Attorneys in turn have implemented tactics that lower the risk of their information and their client’s information being used for improper purposes, such as using firm-wide emails for applications and removing client phone information altogether. For example, our firm established a separate email address for our clients to use in lieu of submitting their personal or company email address. The hope is that these actions will reduce the risk clients face with their information publicly available.

Client Self Defense Tips

Trademark owners are urged to proceed with caution when they receive phone calls, emails and even letters that appear to originate from the USPTO. For example, in most cases, the USPTO will not contact an applicant/owner directly if an attorney has been previously appointed. Furthermore, it is not even mandatory to provide an owner’s phone number to the USPTO when filing an application or other document. Learning the signs of fake correspondence can save trademark owners and their businesses a lot of misery.

• Be particularly cautious about correspondence that was not sent by the attorney of record on your mark.
• If correspondence appears to be directly from the USPTO, examine the document letterhead and format for authenticity.
• Confirm email addresses contain “@uspto.gov” domain and physical addresses in letters are from the United States Patent and Trademark Office headquarters located in Alexandria, Virginia.
• Beware any correspondence that exhibits any false urgency. For instance, requirements to pay a fee within 24 to 48 hours is a sign of fraud.
• If correspondence appears to be from an attorney, double check their information on a state bar website and confirm bar number and contact information.
• Overt typographical and grammatical errors are good indications that the correspondence is fraudulent.
• Authenticate the contents of the correspondence by knowing the USPTO’s trademark maintenance timeline. Any deviation from the following timeframe is indicative of fraud:
  • A Declaration of Use must be filed between the fifth and sixth-year anniversary date of the issuance of a United States registration
  • A combined Declaration of Use and Renewal Application (or a further Declaration of Use if the registration was secured via the Madrid Protocol) must be filed between the ninth and tenth-year anniversary after the issuance of a registration
  • All other trademark renewals/declarations of use occur every ten years
  • A Declaration of Use/Renewal Application can only be filed within one year of the approaching deadline, which is contrary to the representations made in correspondence issued by many scammers.

For more information on how to protect yourself and your trademarks, check out the USPTO’s presentation on Trademark Scams: How to Avoid Them and What to Do if You Get Fooled.

Conclusion

There are many parties seeking to take advantage of trademark owners at various steps of the trademark registration and maintenance process. To reduce the risk of falling prey to such targeted scams, it is essential to recognize the origin and legitimacy of any correspondence pertaining to a trademark application/registration.

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