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 protected]). 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.
Fake Solicitations
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.
Key Takeaway
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.
This alert provides general coverage of its subject area. We provide it with the understanding that Frankfurt Kurnit Klein & Selz is not engaged herein in rendering legal advice, and shall not be liable for any damages resulting from any error, inaccuracy, or omission. Our attorneys practice law only in jurisdictions in which they are properly authorized to do so. We do not seek to represent clients in other jurisdictions.
This post first appeared in Frankfurt Kurnit's Focus on the Data blog (www.focusonthedata.com). It provides general coverage of its subject area. We provide it with the understanding that Frankfurt Kurnit Klein & Selz is not engaged herein in rendering legal advice, and shall not be liable for any damages resulting from any error, inaccuracy, or omission. Our attorneys practice law only in jurisdictions in which they are properly authorized to do so. We do not seek to represent clients in other jurisdictions.
Originally published by the New York Legal Ethics Reporter
This alert provides general coverage of its subject area. We provide it with the understanding that Frankfurt Kurnit Klein & Selz is not engaged herein in rendering legal advice, and shall not be liable for any damages resulting from any error, inaccuracy, or omission. Our attorneys practice law only in jurisdictions in which they are properly authorized to do so. We do not seek to represent clients in other jurisdictions.
This alert provides general coverage of its subject area. We provide it with the understanding that Frankfurt Kurnit Klein & Selz is not engaged herein in rendering legal advice, and shall not be liable for any damages resulting from any error, inaccuracy, or omission. Our attorneys practice law only in jurisdictions in which they are properly authorized to do so. We do not seek to represent clients in other jurisdictions.
