Trademark Scams

After a trademark application is filed, its information becomes a public record and is available on the web site of the U.S. Patent & Trademark Office (USPTO). That allows unscrupulous people to download and use that information to attempt all kinds of scams by email, fax and mail. There are multiple such deceptive companies and multiple kinds of scams and they are examples of internet based fraud. We get many inquiries about them. Usually a communication that you receive is deceptively designed to make it appear (1) that it came from a governmental agency, when it did not, and (2) to make it appear that you need to act quickly to maintain your trademark registration when nothing is currently required. Normally, no governmental agency sends notices reminding you that something is due in connection with your trademark registration. The U.S. Patent & Trademark Office only communicates with your attorney unless you instruct them otherwise. So, whenever you receive a communication about a federal trademark registration or application from someone other than your trademark attorney, it probably is a fraud and scam.

If you enroll your trademark in the Amazon Brand Registry for their protection, they will legitimately communicate about your trademark. Amazon communicates to your trademark attorney as part of their verification process.

There are several different kinds of trademark registration scams. The USPTO has a web page which describes some types of trademark scam solicitations. It is at https://www.uspto.gov/trademarks-getting-started/caution-misleading-notices.

How a U.S. Trademark Registration Is Maintained and The Renewal Scam

In order to maintain a U.S. trademark registration, the law requires that certain documents be filed in the USPTO between the fifth and sixth anniversary of the registration, before the tenth anniversary of the registration and every ten years after the tenth anniversary. If the necessary document is not filed, the registration will be cancelled. Importantly however, the document cannot be filed any earlier than one year before the deadline for filing it. In other words there is a one year time window for filing the appropriate document and the documents cannot be filed outside that window unless filed within a brief subsequent grace period.

We store in calendaring software on our server the data for calling to a client’s attention the need to file a document for maintaining a client’s trademark registration.  However, we notify a client of the need to file a document shortly before or immediately after the one year time window opens. Therefore, most scammers that we have seen send their communications several months before the one year time window opens so they can communicate before a client receives a notice from a trademark attorney. Additionally, the scammers commonly write their communications in a manner to deceive the recipient into believing that the trademark registration will expire on the date that the one year window opens when in fact the registration would expire a year later if the documents were not filed in the USPTO.