Alert: How to Spot the Latest Trademark Scam

I want to bring attention to a scam that has recently emerged, targeting businesses and their intellectual property. The scam involves deceptive emails about trademark registration, and it is important that you stay informed to protect your business.

I have received no fewer than fifty emails from clients and other lawyers about this scam. The names of the sender (i.e., fake lawyer) and his/her fake law firm vary, but the message remains largely the same.

The Scam: How It Works

The sender initiates the scam by sending an email to a business owner. The email appears to come from a law firm—sometimes the law firm’s legal department. The email sometimes contains a photo in the signature block, presumably of the lawyer. I have used reverse image searches and consistently found that the photo is fake—much like the “lawyer” and his/her law firm.

These messages claim that an unspecified party is attempting to register a trademark for the recipient business's brand name. The email typically follows this pattern:

1. It addresses the recipient by name and claims to represent a legal department.

2. It states that the law firm received an application to register the recipient's brand name as a trademark.

3. The email suggests that the brand name is not currently registered with the USPTO, leaving it "open for registration."

4. It pressures the recipient to respond quickly, implying that failure to do so will result in losing rights in the brand name.

5. The message often cites legal jargon, such as the "Act of 1946, specifically §§ 1051 et seq," to appear legitimate.

One such message is excerpted near the end of this post.

Red Flags to Watch For

There are several red flags that can help you identify these fraudulent emails:

1. Pressure Tactics: The emails often use urgency to prompt hasty decisions.

2. Vague Information: The emails do not provide specific details about the supposed applicant trying to register the trademark.

3. Misrepresentations of Law: The emails often contain inaccurate statements about trademark law and the registration processes.

4. Ethical Concerns: The fake lawyer claims that the firm is reaching out to the recipient despite its existing relationship with its supposed client. This issue is an ethical red flag for lawyer.

Protecting Your Business

To protect your business from this scam:

1. Be skeptical of unsolicited emails about your intellectual property.

2. Consult with your attorney before responding to such messages.

3. Regularly monitor your trademarks and consider registering important brand names if you have not done so already.

4. Report suspicious emails to the FTC and the USPTO.

The Trademark Registration Process

If you are interested in registering your trademarks with the USPTO, you should be aware of the process.

1.      Search: Conduct a comprehensive search to ensure your desired trademark is available and not already in use or registered by another party. An experienced trademark lawyer can perform the search efficiently, review the results, determine which results are relevant, and help you assess whether you should move forward with the application process.

2.      File: File a trademark application(s) with the United States Patent and Trademark Office (USPTO), providing details about your mark and the goods or services it represents.

3.      Wait and Respond: The USPTO reviews your application and may issue an office action if there are any issues or objections, which you must respond to within a specified timeframe.

4.      Publication: If approved, your mark is published in the Official Gazette for a thirty-day opposition period, during which third parties can oppose your application.

5.      Registration and Maintenance: Assuming no successful opposition, the USPTO issues a registration certificate, which you must maintain through periodic filings and continued use in commerce.

Brand owners establish trademark rights through use. A brand owner can obtain additional benefits by registering its trademarks with the USPTO.

Example Scam Email

Hi [client name],

I hope this email finds you in good health.

I am writing to you on behalf of the legal department of [fictitious law firm].

We have received an application for the registration of the trademark “[Client's brand]” The applicant is seeking legal protection for this brand name. We are currently reviewing the application to ensure compliance with trademark regulations and will proceed with the necessary legal procedures accordingly. During our research, we came across your information and discovered that this brand name is not currently registered with the USPTO, leaving it open for registration by any interested party.

Given the USPTO's policy of processing applications on a first-come, first-served basis, the other applicant will be granted the opportunity to proceed with their registration if you are not actively using the brand name “[client's brand]" in commerce or are unwilling to seek trademark registration for it.

We kindly request that you respond to us promptly. If we do not receive any objections from you, the other applicant will be permitted to initiate their registration process, which will follow the standard examination and filing procedures established by the USPTO.

It's important to note that, as stipulated in the Act of 1946, specifically §§ 1051 et seq, federal registration of your mark is essential to establish and protect your ownership rights.

We eagerly await your response.

Thank you and best regards,

[fake lawyer]

Conclusion

I encourage you to remain vigilant against the scam discussed above. If you receive an email that matches the description above or seems suspicious in any way, please feel free to contact our office. Your intellectual property is valuable, and protecting it from both infringement and scams is crucial for your business's success.

If you are interested in registering your trademark(s) and would like to discuss the application process with an experienced trademark attorney, please schedule a consultation here.