Trademark Office Scams Alert
Introduction
The United States Patent and Trademark Office (“USPTO”) continues to battle trademark Office scams involving application and registration scams and fraud. The USPTO investigates possible scams involving suspected fraud and unauthorized practice of law. These investigations include solicitations from so-called IP “experts” offering services to trademark owners. The USPTO also battles other fraudulent activities, including “faked specimens of use” created solely for securing US trademark registrations.
USPTO Recently Cancels Thousands of Trademark Applications
and Registrations Based on Fraudulent Filings
Summary Overview – Trademark Office Scams Alert
As reported earlier this year, the USPTO identified many trademark application assistance companies employing fraudulent activities. As a result, they were barred from practicing before the USPTO. The USPTO also cancelled their customers’ trademark filings based on those activities. The USPTO’s final order outlines the fraudulent activities, including the following:
Respondents’ submission of thousands of trademark documents containing false representations of fact upon which the USPTO relied in determining entitlement to registration was both willful and fraudulent.
Respondents would solicit parties interested in applying for a trademark registration by touting falsely low fees and timeframes to obtain registration, or would use deceptive practices to coerce their logo design customers into allowing them to file U.S. trademark applications on their customers’ behalf. In certain cases, Respondents would send customers false, yet official-looking letters, bearing the actual seal of the USPTO, threatening customers with legal action if they failed to register their logos with the USPTO within a particular time period. These fake demand letters, misappropriating the USPTO name, logo, and seal, scared customers into paying for unnecessary services that Respondents were not even permitted to undertake because Respondents are not a law firm, nor do they employ licensed attorneys to prosecute U.S. trademark applications.
Respondents provided customers who hired Respondents to file trademark applications with falsified application filing receipts and invoices for inflated fees. Respondents charged customers filing fees for multiple classes of goods and services while, in reality, Respondents only paid the USPTO for single-class applications, often including a different identification of goods or services than those agreed-to by the applicant.
BEWARE: They are likely still operating under other company names and websites and, if not, they will be back!
What’s the Potential Impact to Trademark Owners that Used these Companies?
Trademark owners lost valuable trademark and trademark application rights when their trademark filings were cancelled. Therefore, by forfeiting trademark application filing priority dates, certain of these brand owners may be forced to rebrand and start the entire naming process over. Accordingly, trademark owners impacted by these events should take certain steps, including ensuring that their trademark use rights were not impacted and re-filing their trademark applications.
Why Use Low-Cost Online Trademark Application Services?
A main attraction for using these online trademark filing platforms is likely low costs. However, as with most everything in life, cost is but one factor to consider. For example, when you’re buying a new car, cost is obviously an important factor. However, there are other factors to consider as well such as quality, safety, and total cost to own. When it comes to legal services, balancing costs with quality and experience should also be considered.
As we all know, “If it’s too good to be true, it probably is” and sometimes “You get what you pay for.”
Actions to Take if Your Trademark Filing was Terminated Based on this Ruling
1. Confirm your application was terminated. If you worked with any of the identified entities (see link below), the USPTO should have emailed notices of termination to the correspondence email address of record. Unfortunately, however, for most that email was likely sent to the scammers and not the trademark owners.
If you did not receive the notice, check the status of your application in the Trademark Status and Document Retrieval (TSDR) system to confirm that your application was terminated. If it was terminated, prompt action is warranted.
2. File a new application and conduct a new trademark search. If your application was terminated, you should file a new application immediately and undertake a trademark search to ensure that there are no intervening trademark applications or uses that may block your new application or impact your ability to use your selected trademark.
Listen to our podcasts here and here to learn more about trademark searches and the trademark registration process.
3. File a Petition with the Director. If you can establish that the violations do not apply to your terminated application(s), you may file a Petition to the Director and request that your application(s) be reinstated because of error.
How to Avoid Trademark Office Scams and Pitfalls – A Few Considerations
1. Know who you are doing business with. Review the attorney biographies to ensure they are experienced trademark attorneys. If you cannot identify any of the attorneys from the company website… or any of its principals… that might be warning number 1…
2. Talk with them for a few minutes to see if they are confident in their trade and skills and can speak clearly and confidently about the rules, regulations and strategies for trademark use and registration.
3. And perhaps most importantly, hire “trademark attorneys” and not “attorneys that do trademarks.”
To see the full list of companies implicated by the USPTO decision, click here.
To read the full USPTO final order, click here.
