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December 22nd, 2020
Avoid New Trademark Email Scams
The U.S. Patent and Trademark Office (“USPTO”) is the subject of some new and sophisticated email rackets. In addition to the solicitation scam we previously warned about, scammers are using new strategies to impersonate the USPTO and make unauthorized changes to trademark files. You should carefully scrutinize any emails you receive regarding your trademark filings. Do not pay any trademark-related invoice you receive by email without first checking with your attorney.
Unauthorized Changes to Trademark Files
Unscrupulous third parties are using the USPTO’s online filing system to make changes to pending trademark applications and registrations. For example, they are filing requests to change the primary email address on record. If successful, the bad actor would receive all official communications from the USPTO. More importantly, they would be able to act as the official correspondent, make spurious filings in relation to the applications or registrations, and divert incoming business emails regarding the relevant trademarks.
The USPTO advises that scammers may be engaging in this scheme in an attempt to authenticate knock off goods. Certain online stores use brand registries that cannot be activated without an authentication code that is sent to the primary USPTO correspondent. By changing the correspondent’s address, counterfeiters can intercept the code and any inquiries about official (or not) products. However, the scam is not limited to product manufacturers. A wide range of entities, including service-only business, have been targeted.
Spoofing the USPTO
The USPTO recently warned about a new wave of legitimate-looking emails. The emails appear to be coming directly from the USPTO since they spoof the Office’s official address (email@example.com). The messages falsely claim the USPTO has a new policy requiring “client” registrations with alleged penalties for non-compliance. Or, they may assess bogus USPTO fees.
Trademark owners continue to receive a steady stream of fake solicitations. These could be, for example, from sham Trademark Registries in the U.S. or abroad, offers to (unnecessarily) renew or republish registrations, or false alarms regarding registrations that allegedly lapsed, but are really in good standing. The solicitations look convincing and often assert short “deadlines” that must be met to maintain trademark filings.
The USPTO posts a list of entities known for contacting U.S. trademark owners with fake solicitations and notices. That page also links to examples of fraudulent solicitations sent by each listed company.
Most official trademark communications will come through your attorney. Be suspicious of any third party trademark-related emails you receive and forward them to your attorney for review. If you are not using an attorney and receive an email from the USPTO about a correspondent change that is not authorized, the Office has set out several steps to follow here.
If you have questions about USPTO email scams, or about other trademark and brand management issues, please contact Rachel Santori at (212) 705 4855 or firstname.lastname@example.org, Catherine Farrelly at (212) 826 5579 or email@example.com, Kimberly Maynard at (212) 705 4853 or firstname.lastname@example.org, or any other member of the Frankfurt Kurnit Trademark & Brand Management Group.
Other Intellectual Property Law Alerts
What Does Brexit Mean for Your UK Trademark Rights?
On January 31, 2020, the UK will formally withdraw from the European Union, and brand owners who have relied on their EU trademark applications and registrations for protection in the UK will need to make sure that their rights are secured in the UK. Read more.
January 31 2020
Supreme Court Says “Scandalous” Trademarks May be Registered
Here’s some news for brands, creators, and other entities developing nonconforming names or entertainment content. Yesterday, the Supreme Court ruled that FUCT and other profane, “scandalous” or “immoral” words may be registered as trademarks. Read more.
June 26 2019
Supreme Court Requires Registration Prior to Bringing Copyright Suit
Yesterday, the Supreme Court issued two unanimous decisions affecting the rights and remedies available to copyright owners. Read more.
March 5 2019