In April, the U.S. Patent and Trademark Office (USPTO) released a webinar called, "Trademark practitioners: avoid attorney scams and bad behavior," https://www.uspto.gov/learning-and-resources/uspto-videos/attorney-practitioners-avoid-attorney-scams-and-bad-behavior focused on exposing trademark related scams. As the USPTO acknowledges, the scams have grown in sophistication, volume and the ability to evolve, despite its anti-fraud initiatives.
In addition to the "classic" scams of sending misleading invoices to trademark owners, requesting payments for unrequired services — new scams, are always developing. We have recently seen an increase of clients who received emails from alleged lawyers or business brokers informing them that the sender has been asked by another company to file (or has already filed) a trademark for the exact mark as the client's business name as well as urging them to pay money to authorize immediate action or risk losing the legal rights to their own business name. Even if the mark is in fact unregistered, careful consideration should be given as to whether registration of a business name is possible or makes sense. And no upfront immediate fee is required to preserve your rights.
Another scam comes into play when a phone number for an applicant is included in the trademark application. The applicant – even if represented by counsel – will likely receive a call that day, but after hours, from someone claiming to be a USPTO employee who is using a USPTO "spoofed" phone number, informing the applicant that the application payment was rejected and needs to be made again. Phone numbers do not need to be provided.
And, finally, the USPTO recognized that there are low-cost platforms purporting to file and prosecute applications where the applications are never actually filed. These platforms use fake documents to convince the applicant to pay more money to "respond" to USPTO actions and requests for additional fees. The scammer will usually offer a "flat fee" below $100, but then make carefully timed, repeated requests for additional fees that they claim are required by the USPTO.
The USPTO warns users through specific, dedicated pages on the office website addressing the scams and offering guidance if you have fallen victim (Protect against trademark scams | USPTO) However, practically, given the lack of police powers, stopping the scams requires community input – specifically by sending reports to the relevant agencies each time a scam is identified and providing evidence of illegal activity: What to do if you've been scammed | USPTO.
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