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How to Avoid Common Trademark Scams



What's the problem and why does it happen?


Scammers are targeting trademark owners with a frequency and variety of approaches that I’ve never seen before. From the beginning of my practice, clients have contacted me about suspicious phone calls, e-mails, or paper mail, but I have noticed a significant increase lately in terms of volume, format and sophistication of scams. Below, I’ll describe four common types of scams, how you can recognize them, and how you can protect yourself.


When you file an application to register your mark with the USPTO (the federal government agency in charge of registering patents and trademarks), you have to provide certain information about the mark owner. This includes mailing address (publicly accessible) and e-mail address (although this is not supposed to be publicly accessible, the USPTO unfortunately has had multiple security breaches). Scammers often employ bots to comb through the USPTO's database for information they can use to target mark owners and exploit them. The USPTO has only a limited amount of resources to devote to this problem, and as a result, the scams are getting worse.


Common scams:


Here are the four most common types of scams that clients have contacted me about recently.


Scam 1: The scammer calls you and says they are from the USPTO. They need to discuss your application. They may try to gather additional sensitive information about you or even your credit card or bank account information.


Scam 2: The scammer e-mails you to say that someone else is trying to register your mark and says they can file an application for you ASAP to protect your rights.


Scam 3: The scammer e-mails you to say they filed an application for someone else to register your mark, and they can file an application for you to protect your rights.


Scam 4: The scammer mails you a paper form that looks very official and seems to come from the USPTO seeking payment of fees related to your application or registration. (I had the pleasure of receiving one of these recently for my very own trademark registration!)


How can you recognize these scams for what they are, and how can you protect yourself?


1. Be suspicious of any communications like this that say you need to take action “urgently.” These scammers tend to pressure the mark owner to take action ASAP. They want to generate a sense of panic so you are thinking less clearly; and they don’t want you to pause to analyze or ask questions.


2. Be wary of any unsolicited communications. If you have never contacted this company or person before, how did they get your contact information, and what motivates them? Especially if you are already represented by another attorney, why would a new one solicit you?


3. The USPTO does not currently mail mark owners paper forms to fill out with payment information.


4. The USPTO is located in Alexandria, Virginia. If you receive paper mail from a return address in a different location or asking you to send something to a different location, it’s not from the USPTO.


5. Be wary of any call supposedly from someone at the USPTO that comes from a number that does not begin with 571. I’ve never received a phone call from the USPTO that started with a different area code.


6. Similarly, all emails from the USPTO are sent from an e-mail address ending in "@uspto.gov" so any email supposedly from the USPTO that comes from an e-mail address that ends differently is not from the USPTO.


7. The USPTO means the "United States Patent and Trademark Office." Scammers often create names that combine some but not all of these words. If you receive communications from someone who uses some but not all of that wording (for example, "Patent and Trademark Bureau") or who rearranges the order of those words, they are not the USPTO.


8. Look out for typos and strange grammar or downright gibberish. Legitimate U.S. law firms should communicate in clear, standard English largely free from typos. Many of these scams originate overseas, and the drafters may not be 100% fluent in English.


9. Look out for false statements. One of the most common false statements in these communications is some variation on the claim that the Lanham Act requires you to register your mark with the USPTO. It doesn’t.


10. Be wary of any communication that urges you to file something in a race against someone else who has already filed something. Even if someone else did file to register a mark that conflicts with yours, if all you do is file a new application for your mark after they’ve already filed their application with the USPTO, in most cases their application will block yours. There is a slender exception to this general rule for applications filed in the U.S. based on foreign-filed applications/registrations that could give you an earlier effective filing date. None of these scams that I am aware of are talking about that. They also are not referencing other means of dealing with an earlier-filed application such as filing a Letter of Protest or opposition. They are just pressuring targets to file a new application.


11. If an attorney filed an application for a client to help them register their mark and then contacted someone else who used a similar mark informing that person that the attorney’s own client might be infringing their trademark, that would be a massive conflict of interest and ethics violation. A legitimate, competent U.S.-licensed attorney would be aware of that and would not contact you to hire them to fight against their own client over trademark rights.


12. If you hire an attorney to represent you at any stage in the application process, the USPTO should not call you. If you receive a call supposedly from the USPTO, just politely ask them to contact your attorney and say no more. Politely is key. Sometimes, a USPTO Examining Attorney can make a mistake, fail to see the Attorney of Record information in the application, and contact the applicant directly. You don’t want to alienate them by saying something nasty.


13. If you are working with an attorney, always check in with them about any suspicious communication. If they focus on trademark applications, they are seeing these scams all the time and should be able to confirm for you pretty quickly whether the communication is legitimate.


14. Check the USPTO's site. These scams are so common and such a big problem, that the USPTO actually has multiple pages to help mark owners learn about and recognize the scams. This page is a good place to start for general information:



If you have received a suspicious communication by paper mail, you may want to check here to see if that communication matches any of the known scams/misleading notices:



That can be one of the quickest and easiest ways to rule out fraudulent solicitations. To give you an idea of the scale of the problem, this page currently links to more than 90 different fraudulent solicitations that the USPTO already knows about.


Finally, don't be discouraged. Just be cautious. The benefits to registering your trademark are absolutely worth braving the spam and fraudulent solicitations that may come your way. And now you're much better prepared to handle such communications if you receive them.


This information was posted on June 6, 2024 and was accurate as of the date of writing. However, the law changes frequently, and readers should not rely solely on general online information but instead should consult a licensed attorney by asking questions about their specific issues when they need legal advice.



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