Trademark-Registry Impersonators
We frequently get questions from our clients about “important notifications” from companies offering to monitor, register, or renew their trademarks. The scam requests typically look like invoices or letters, often containing false due dates or threats about loss of rights if you don’t send payment immediately.
These scams can be hard to identify because scammers often use names and logos that are similar – or even identical – to those of the US Patent and Trademark Office (USPTO).
Unfortunately, it’s easy for scammers to obtain enough specific information about your trademarks to appear to be working for the USPTO. Filings are publicly available online, and they include the trademark owner’s contact information, as well as relevant dates and application/registration numbers.
Telephone scammers have also begun falsely claiming to be USPTO employees, using “spoofing” to trick phone networks into displaying the name, number, and location of the USPTO. The real USPTO will never ask for your personal or payment information over the phone.
Trademark-Attorney Impersonators
Scammers may also claim to be law firms with expertise in trademark law, and they’ve started to target not just those with registered marks, but also those who haven’t yet applied to register their marks.
This type of communication may try to convince you that someone else is about to register your brand name as a trademark and that if you don’t send money immediately, you’ll lose all rights to your own brand name.
Not long ago, we experienced a situation where our client received threatening emails, allegedly from a California lawyer. The email claimed that if our client did not immediately pay that lawyer to register our client’s brand name, he would register the mark for someone else, “potentially leading to the loss of” our client’s “right to use the brand name.”
The letter goes on to imply that if that happens, our client might be sued for trademark infringement by the new registrant. This is not how trademark law works in the United States.
Even if someone else successfully registers your brand name, and even if that registration later meets the legal requirements to become “incontestable,” you, as a prior user of the mark, will retain the right to continue to use your mark, though you will be limited to the geographic area in which you used the mark before the new user’s proposed registration was published for review by the public.
That publication begins a 30-day period during which any member of the public who thinks they’ll be harmed by the registration of the trademark can oppose that registration by filing a Notice of Opposition.
This particular scammer attached a digital business card indicating that he is an “Intellectual Property Attorney” working for a company that marketed itself as a “private legal firm” specializing in copyright and trademark services.
When we checked the supposed lawyer’s name in the California State Bar’s online directory, we learned that the lawyer was not affiliated with that company, and when we called his real office, we discovered that he was already working to address the scammer’s unlawful impersonation of him.
Some of the scam communications state that “according to the Lanham Act of 1946 (§§1051 et seq.), federal registration is a prerequisite for securing ownership rights.” This, too, is a scare tactic; US law does not require marks to be registered in order to be protected, though there are benefits to registration.
Domain Names
Many of our clients have also received notifications from purported domain name companies asking permission for another company to obtain a domain name that’s virtually identical to the client’s brand name. Alternatively, the notification may ask whether the client has already authorized the other company to register the domain name.
If the client responds that the off-shore company’s use of the proposed domain is unacceptable, the scammer says the only way to prevent the infringing domain name from being sold to the off-shore company is for the client to buy the domain name for a higher-than-normal fee.
*****
The prevalence of scams means you must be extremely careful when you receive any type of request for payment. You shouldn’t, however, simply throw away or delete requests you’re not sure about, since they might be legitimate. In that event, ignoring the request could lead to loss of your rights.
Do not pay any requested fees, scan any QR codes, click any links, or respond to any unsolicited communication until you’ve confirmed it’s not a scam.
Carefully read any letter or notice you receive. Scam notices often – but not always – say outright that they are not official government notices. If that’s not the case, review the lists of known scams posted by the USPTO and the World Intellectual Property Organization (WIPO).
Even if the communication you received isn’t mentioned on those lists, you should be very suspicious of any call, email, text, letter, or other communication you receive that asks for money or personal information. Another sign of fraud is a tight deadline, such as 24 or 48 hours.
Also try conducting an online search to see if it’s a scam. Don’t use the contact information on any suspicious notice you receive. Do a search to find the real contact information for the USPTO or check the relevant state bar’s online directory to find the supposed lawyer’s real contact information.
If you still aren’t able to tell if a communication is real, whether or not it relates to trademarks, please feel free to contact us for assistance.
