This is part of a continuing effort to alert copyright and trademark owners to sophisticated scams targeting their IP and effective legal strategies for responding. Stay tuned for an upcoming article about fraudulent website schemes aimed at events.

We periodically post warnings on this website about trademark scams and what to do if you are on the receiving end of a fraudulent communication.

A recent egregious variation targets trademark owners promptly after they file a new application or submit a maintenance filing with the U.S. Patent and Trademark Office (PTO). The scam is generally in the form of an email purporting to be from a named individual at the PTO. The email claims that the application or the registration has been abandoned or lapsed, and it offers to revive it for a fee. These emails are sometimes addressed to individuals related to the filing entity but whose names do not appear in the official PTO records for the trademark, suggesting a level of research into the mark.

Another recent scheme lures mark owners into using certain services to file a new application for a fee much lower than typically charged. An application may actually be filed with the PTO, but is for a mark that is either generic or for other reasons unregistrable. An office action rejecting the ill-fated application follows, often causing the applicant to abandon the application and lose the funds it has paid to the service and the PTO application fee, or face new additional expenses. Schemers like this sooner or later are the subject of complaints for excessive upselling, hidden fees, deceptive automatic renewals and negative social media postings by dissatisfied customers. Forewarned is forearmed.

There is a variation on this scheme where a scam service files an application in a foreign jurisdiction for an excessively broad description of services. The foreign application is then used as the basis for a U.S. application, allowing the applicant to obtain a U.S. registration without initially submitting proof of use. Sometimes the deception does not get discovered until the first U.S. maintenance filing five years later. The trademark owner thus proceeds as though the mark is valid for the broad goods or services description, leading to any number of complicated problems requiring potentially costly action.

What to do if you are targeted by a scam:

• Check the email address. If it is from a GMail or non-official PTO account, it is fraudulent. Read the email address closely as often a single letter will differentiate the real from the fraudulent.
• Visit this USPTO page: https://www.uspto.gov/trademarks/protect/what-to-do-if-youve-been-scammed and send an email to TMScams@uspto.gov, attaching a copy of the fraudulent email.
• Consider additional steps, including filing a consumer complaint with the FTC, spelled out on the USPTO website.

If you are an L&L client, be assured that we will advise you of any PTO developments. Of course, if you are unsure or if we can help in any other way, forward the email to Jeannette Carmadella (jeannette@lutzker.com).