Marking Yourself Safe From Trademark Scams in 2023

As 2023 gets underway, we would like to remind our readers to remain vigilant for trademark scams, which target both new application filers and established brands, and have been known to arrive via email, mail, fax, and even text.

As in the past, the types of scams typically take one of the four following forms:

1. “Official” Letters or Notices from the “U.S. Patent and Trademark Office,” or Similarly-Named Agency

These kinds of scams have become so prevalent that the USPTO maintains a database of examples, along with helpful information to determine whether a particular communication is fraudulent. Current examples include notices that actually bear some form of the USPTO name and seal, and direct recipients to pay the fee, and then forward the payment receipt to their trademark attorney for final processing. Others request the payment of fees to avoid cancellation of trademark registrations, while others are styled as official “infringement notices.” These types of scams may provide a phone number to call to leave one’s credit card number, or include an official-looking form to complete with payment information along with a return addressed envelope with a P.O. Box.

If you are one of our clients, all official correspondence and fees will be routed through our firm – and you can always forward such notices to use for a (complimentary) review to confirm authenticity.

For pro se applicants, official USPTO correspondence will (1) use the wording “United States Patent and Trademark Office” all together, with no abbreviations; and (2) list an actual Alexandria, Virginia street address for the PTO (see here) or “@uspto.gov” email address.

2. Solicitations Offering to Provide Legal Services to Meet USPTO Requirements

Because all USPTO application and registration data is available online, scammers are able to send applicants targeted communication noting upcoming due dates, often citing exaggerated fees and improper requirements. Some recent examples of this type of scam contain links to third party websites that may contain malware and/or request input of financial information.

3. Solicitations for Trademark Watch Services

Other common scams include offers to list a trademark in a private trademark “registry,” or some sort of watching service. The vast majority of these services provide absolutely no benefit to the trademark owner.

4. Warnings About International Domain Name Registrations

Finally, perhaps the most common type of scam involves an email communication, typically from an entity described as Asian-based consulting company, that purports to notify the trademark holder that another entity is seeking to register the client’s trademark or business name as a domain name in a foreign country. The email gives the brand owner a short period of time in which to secure the domain name for their own. These notifications are virtually all scams or, at best, solicitations to purchase unnecessary domain names.

What You Should Do

If you receive any correspondence relating to your trademarks or domain names, send it to us (or your trademark counsel) for review – particularly prior to paying any requested fees or clicking any links.

This article appeared in the January 2023 issue of MarkIt to Market®. To view our past issues, as well as other firm newsletters, please click here.