If you receive a solicitation for fees related to your trademark, BEFORE you pay, check to make sure the communication is really from the USPTO and is not a SCAM!
The USPTO stands for the “United States Patent and Trademark Office,” and it is the federal government agency that reviews your application to register a trademark (or service mark) on the federal register. There are legitimate fees that you must pay to the USPTO to obtain a federal registration of your mark, such as filing fees (to cover the agency’s costs of reviewing your application). But lately, a proliferation of private companies have been contacting trademark applicants and registrants with misleading/scam notices about fees and directing the applicants and registrants to pay the fees to these private companies.
The problem arises because certain information in your application appears in a publicly accessible database. These private companies strip e-mail addresses and physical mailing addresses from this database and then send misleading/scam notices. Some of these notices are very sophisticated in design and appear to come from a government agency.
The USPTO reports that in 2017, the perpetrators of a trademark renewal scam (operated through a private company called the Trademark Compliance Center) were convicted of money laundering. Earlier this year (February, 2020), an arrest warrant issued for Viktors Suhorukovs. In court filings related to the case, it is alleged that Suhorukovs amassed more than $1.2 million through a mail fraud scheme targeting trademark registrants. As an example of Suhorukovs’s tactics, the Complaint in the case against him describes mail sent from “Patent and Trademark Office” to a business owner with two invoices in the amount of $925.00 each for trademark renewal fees. The Complaint further alleges that the business owner believed the mail was legitimate and sent a check for $1,850.00 to the address indicated in the invoice – meaning the payment went to Suhorukovs’s private company, not the USPTO. According to statements from bank personnel identified in the Complaint, it is alleged that Suhorukovs received many such checks in “relatively small amounts not exceeding a few thousand dollars each at most,” and that these checks, over time, added up to more than $1 million.
To avoid being misled, here are a couple of tips to bear in mind:
1. Legitimate e-mail addresses related to the USPTO end in “@USPTO.gov.” If the e-mail you receive comes from an address with a different ending, that’s a red flag.
2. The USPTO offices are currently located in Alexandria, Virginia. If you receive an e-mail referencing an address outside of Alexandria or physical mail that appears to come from a different city, that’s another red flag.
If you receive a suspicious letter or e-mail, go to the USPTO website: https://www.uspto.gov/trademarks-getting-started/caution-misleading-notices where you can:
1. check the company name in your communication against a list of dozens of companies allegedly sending misleading notices to applicants/registrants;
2. view examples of misleading/scam notices; and
3. find useful contact information to report a misleading/scam notice.
If you were misled and paid funds to a private company thinking you were paying them to the USPTO, contact TMScams@USPTO.gov.
Good luck, and stay safe!
This information was posted on September 22, 2020 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.