Owners of federal trademark registrations and applications have been continuously targeted by scam artists who pull owner names from the United States Patent and Trademark Office (USPTO) database and contact these owners offering useless or extremely overpriced trademark services. Sometimes these scammers even pretend to be acting on behalf of the USPTO. Unfortunately, this is not a new occurrence and many of these solicitations appear legitimate. This practice has become so prevalent that the USPTO even held a public roundtable this summer to raise public awareness and discuss possible ways to continue the fight against this problem.
These scamming organizations, which often use names that resemble government agencies, will obtain freely accessible information regarding a registration or application, such as the graphic representation of the trademark and serial number, and then create an official-looking letter or invoice seeking payment regarding the referenced trademark. These solicitations come in various forms and have included offers to file renewal and maintenance documents, trademark monitoring services and recordation of applications or registrations in useless or fake directories. It is also common for scammers to take a victim's money and never deliver services of any kind. This can be a serious problem when it comes to renewal and maintenance documents, because the victim's registration will lapse unless the proper filings are made.
Until these scammers are stopped, it is important for every owner of a trademark registration or application to know that all official correspondence concerning a federal trademark will come from the "United States Patent and Trademark Office" in Alexandria, Virginia, with zip code 22313. If the owner is contacted by email, it will be from the domain "@uspto.gov." Typically, payment for maintenance and renewal documents is collected simultaneously with the submitted filing. Consequently, it is highly unlikely that you would ever receive a genuine invoice request from the USPTO.
If you receive a fraudulent trademark solicitation or if you are unsure whether an invoice is fraudulent, retain the document and immediately contact your trademark attorney. Additionally, the Federal Trade Commission has set up an online complaint system (accessible here or by calling 1-877-FTC-HELP) to turn in suspected scammers. These complaints can assist the Department of Justice ("DOJ") in deciding to pursue an organization criminally. In fact, in December 2016, the DOJ successfully obtained two guilty pleas in a trademark solicitation scam involving approximately $1.66 million in stolen funds from approximately 4,446 victims.
If you have already submitted payment to a scammer, unfortunately, you are unlikely to regain those funds, because these scammers continuously change addresses and any other traceable information. However, you should retain and submit the solicitation to your trademark attorney and determine whether your trademark application or registration is at any risk.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.