Intellectual Property Law - USPTO Scam Notices Continue to Rise

The number of scam notices received by trademark owners after filing a trademark application continues to be on the rise.  In March 2017, the operators of a private company—the Trademark Compliance Center—were convicted of money laundering in a trademark renewal scam.  And in 2021, the operator of two entities sending out misleading solicitations under the names “Patent and Trademark Office” and “Patent and Trademark Bureau” pled guilty to four counts of federal mail fraud.   Even after publicized litigation, many businesses continue to contact trademark applicants and registrants in an attempt to solicit services for an unjustifiable cost.

All maintenance filings and responses to office actions must be completed by the applicant or registrant or by a licensed U.S. Attorney authorized to act on the applicant’s or registrant’s behalf.  Many of these companies who solicit trademark applicants or registrants for assistance with maintenance filings or office action responses are not affiliated with licensed U.S. attorneys, and cannot lawfully provide such services.

How USPTO Scams Obtain Information

The USPTO’s trademark database is publically available and therefore, many private companies often acquire information from USPTO databases to solicit applicants and registrants.  Notably, these solicitations may often contain correct information (for example, that a filing is due to keep a registration active).  Although some of the information contained in the solicitations may be correct, many of these solicitations advertise unneeded services or request the payment of fees that are not due under the current USPTO fee structure. It is important to understand that applicants and registrants are never required to use the services offered by these companies.  

Some USPTO Correspondence Indicators

All official correspondence about a trademark application or registration will be from the “United States Patent and Trademark Office,” which is located in Alexandria, Virginia, and all emails will be from the domain “@uspto.gov.”  If you have engaged a licensed U.S. attorney to assist with the initial application, he or she will likely be the recipient of any official notice or correspondence from the USPTO.  The USPTO has a webpage that provides a list of solicitations examples from third parties unaffiliated with the USPTO, including known scams, potentially misleading offers, and notices, and other non-USPTO solicitations about which the USPTO has received inquiries or complaints. 

Handling Trademark-Related Offers and Notices

Fraser Stryker strongly advises any applicant or registrant receiving email correspondence that appears to be from the USPTO or any third party not to respond directly to such email and to verify the authenticity through the USPTO’s website. If you have received a trademark-related offer or notice that you believe is misleading, the USPTO suggests that you file a consumer complaint with the Federal Trade Commission (“FTC”) immediately. Keep the offer or notice and the envelope as these items may be requested later. Although the FTC does not resolve individual consumer complaints, as the nation’s consumer protection agency it may begin investigations and prosecutions based on widespread complaints about particular companies or business practices.

 Fraser Stryker’s trademark team is available to assist with questions regarding any communication related to your trademark.

 

Author: Margaret (Maggie) Rossiter and M. Tyler Johnson

Margaret A. (Maggie) Rossiter

Margaret A. (Maggie) Rossiter

Associate

(402) 978-5336
mrossiter@fraserstryker.com

M. Tyler Johnson

M. Tyler Johnson

Associate

(402) 978-5287
tjohnson@fraserstryker.com

This article has been prepared for general information purposes and (1) does not create or constitute an attorney-client relationship, (2) is not intended as a solicitation, (3) is not intended to convey or constitute legal advice, and (4) is not a substitute for obtaining legal advice from a qualified attorney. Always seek professional counsel prior to taking action.