Hundreds of thousands of trademark application are filed each year, and that number has continued to increase at a substantial rate. Unfortunately for the United States Patent and Trademark Office (USPTO) and its applicants, along with the increase in filed applications comes an increase in fraudulent schemes. Five years ago, the USPTO established the Register Protection Initiative to combat the schemes and scammers and deter them from scamming the USPTO and its applications. Despite its efforts, the number of scams has continued to increase and on multiple fronts. So far this year, the USPTO has issues four times the number of sanctions for improper or fraudulent applications, and we’re just beginning the fifth month of the year!
If you are a trademark application or registration owner, you might have seen first-hand another type of scam that involves third parties directly soliciting trademark applicants/owners. These solicitations often contain threats that a trademark application/registration is at risk of abandonment until they pay additional fees. In 2021, an investigation revealed a Latvian national had duped hundreds of trademark owners into sending him over $4 million dollars for “fees” to keep their trademarks alive.
Photo credit to the United States Patent and Trademark Office
These scams are hurting trademark owners in many ways such as the increase in processing time and more legitimate applications being refused. USPTO Examining Attorneys are spending more time reviewing applications for fraudulent features adding to the increase in processing times. Even with Examining Attorneys being more thorough in the vetting process, some fraudulent applications are approved for registration which block legitimate applications, the Examining Attorney determines to be too similar, from registering. Not to mention how this stunts business plans and can incite delays in product production.
The USPTO has taken some steps to mitigate the risk of scam, such as implementing a mandatory identification verification program for attorneys to ensure filings are being done legitimately. However, they have no law enforcement power and are only able to place suspicious filings in a holding docket while it gets reviewed or issue administrative sanctions to those who violate USPTO filing rules. That’s why it’s so important for trademark owners to take the extra steps to protect themselves and reduce the risk of being deceived. Here are a few ways to do that:
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- It is not mandatory to provide a phone number when filing a trademark application or other documentation. Leaving this field blank limits scammers ability to contact you via phone call.
- Proceed with caution when receiving phone calls, emails, or letters that appear to be from the USPTO. In most cases, the USPTO will not contact the owner directly if an attorney is on record of the trademark application/registration.
- Be cautious about correspondence that was not sent by the attorney of record on your mark, especially if it portrays false urgency (such as requesting payment for a fee within 24 to 48 hours). If you’re unsure if the notice is real, reach out to your attorney to confirm. If the correspondence appears to be from an attorney, check their information on the state bar website to confirm their bar number and contact information.
- Carefully examine all correspondence that appears to be directly from the USPTO. If it’s an email, confirm the email address contains @uspto.gov. If it’s physical mail, confirm the physical address is for the United States Patent and Trademark Office with headquarters located in Alexandria, Virginia.
If you want more information on how to protect yourself and your trademark applications and registrations from scam, the USPTO’s presentation on Trademark Scams: How to Avoid Them and What to Do if You Get Fooled is a great place to start! If you receive any suspicious emails or other correspondence about your trademark application or registration, please contact your attorney of record or Madan Law PLLC for a courtesy review before paying any fees.