03 Feb Beware the Trademark Scams
Recently, I have taken on a client who was the subject of a trademark registration scam. My new client’s experience is a modest twist on what often happens but has sufficient similarities with the most common scam form that it bears telling the general story. It turns out that scams are common enough that the United States Patent & Trademark Office has a fairly expansive subpage on its website dedicated to Trademark scams.
The USPTO reports two broad types of trademark scams that may target small businesses: The shared resources scam and the trademark-related solicitation scam.
The Shared Resources Scam
The first scam is where a company, usually a logo design company or a low-cost trademark filing company, says they have received “an alert” from a “legal department” stating that a third party had contacted the USPTO about filing the same or similar logo. The scammer will imply or actively mislead customers into believing they share resources with the USPTO and that because of that special relationship with the USPTO, the company can either register your trademark more effectively or that the customer is required to use the scammer’s services.
The USPTO trademark database is available to the public and is free to search. The database is pretty intuitive to use. While practice makes a user better able to find what you are looking for, you can do simple word searches like Google, Yahoo!, or any other search engine. Other than the free database available to the public, the USPTO does not share resources with any logo design company or any “low-cost” trademark registration filing company. The USPTO does not search third-party websites to look for similar trademarks.
The USPTO also strictly limits the people who can file an application for registration to the USPTO. Only the applicant (the trademark owner) or a licensed U.S. attorney can file an application. A non-attorney-led filing company cannot file an application on your behalf. If a company says they can file something for you, ask for the name of the attorney who is responsible for the filing, what state that attorney is licensed, and look the attorney up in that state’s attorney regulator. You can also check to see if the attorney has filed other applications with the USPTO (we have to register to use the USPTO’s application filing system, including providing photo identification). The USPTO can also discipline and prohibit attorneys from filing with the USPTO for violations and abuses of the application and registration system.
The Trademark Related Solicitation Scam
This scam usually starts with what appears to be an official letter from an agency whose name looks very official, often using words like Trademark Bureau, Trademark Agency, or something similar. Often, the scams will offer additional services related to your trademark application, registering your trademark in other countries, or with a private registration service. This is the most common scam I see. The scam comes at four different time points in the registration process.
- Many clients will get a letter from an official-looking entity offering additional services right after I submit an application on behalf of a client.
- If the USPTO issues an Office Action (usually a request for additional information or something similar), my client will receive a letter offering to represent my client and respond to the Office Action. This is the least common that I see.
- After the trademark is registered, my clients will get several letters offering to register their trademark in other countries or on some private registry. This is the most common scam letter I see.
- Finally, when it comes time to renew the trademark registration after five years of ownership, a scam letter from an official-sounding entity arrives containing some dire warnings and then offers various services, usually for hundreds or thousands of dollars.
The USPTO has actually compiled an (ever-growing) list of trademark-related solicitation sample letters. (scroll down the page). By the way, as the attorney of record on trademark registration applications, I often get spam emails offering services, so no one is immune from scam attempts. I usually delete or forward the scam emails to the USPTO.
Most USPTO communications come by email and all with the @uspto.gov email domain. If an Office Action is issued, applicants or their licensed U.S. Attorneys get an email notice. When it comes time for registration renewal, applicants and their attorneys will get an email notice.
Snail mail correspondence comes from the United States Patent & Trademark Office with an address in Alexandria, Virginia. If you have a gut reaction about a letter or email, then you probably are right to be suspicious. You can contact the Trademark Assistance Center at 800-786-9199 (press 1) if you have any doubts or suspicions. If you are a Johnston Business Law Group client, you can always contact us. If you are not a client and you are not sure, please book an appointment here, and we help identify if the communication is a scam.
What to Do If You Receive a Scam
Unfortunately, the USPTO is not a law-enforcement agency. The best that the USPTO can do is gather information and forward it to the Federal Trade Commission or the Department of Justice for criminal investigation and prosecution (which are successful at times). Also sadly, the USPTO will not issue refunds for fraudulently filed applications or get you a refund from your scammer. If you have been the victim of a scam, you can file a claim directly with the Federal Trade Commission. Also, the attorney general in your state (or in the state where the scammer claims to be located) will handle consumer protection claims.
- Although there are benefits to registering your trademark, you are not required to file a trademark registration. There is no penalty from the government for not registering a trademark. The process is entirely voluntary.
- Trademark registration fees are based on the type of goods and services you asell–never on how you sell the products. If you are selling pickles (for example), you will have one registration fee, no matter if you sell your pickles online, in a mobile food truck, in a brick-and-mortar store, or wholesale through other retailers.
- Only the trademark owner (applicant) or a licensed U.S. attorney can file a trademark application with the USPTO.
- Unless you are planning to sell your products overseas, there is no need to register the trademark in any other country. (Amazon sellers may have different experience).
- The USPTO communicates primarily through email using the @uspto.gov domain, and their telephone numbers use a (571) area code. The agency’s official address is in Alexandria, VA, and its official name is the United States Patent & Trademark Office.
- If it feels like a scam, you can communicate for free with the Trademark Assistance Center at 800-786-9199 (press 1). The longest wait I have ever had with the Trademark Assistance Center is about 10 minutes, so be a bit patient.
Of course, you can communicate with us and schedule a call with us.