Don’t Fall for These Trademark Scams!

Three trademark scams are spreading: two by email and the third by phone. Both intend to scare you and take your money. Don’t let them fool you.?

Scam to prevent someone else from registering your trademark

This scam starts with an urgent-sounding email from a law firm. They offer to help you avoid losing your trademark to one of their other clients. It uses one of the Seven Weapons of Influence from Robert Cialdini’s book Influence: Scarcity. “Hurry, call us, or you will lose your trademark.”

Below is a sample letter emailed to business owners. (I have changed the lawyer’s name to protect the guilty.) It’s full of red flags.

I am writing to you on behalf of the legal department of (Dewey, Cheatham and Howe).

We have received an application for the registration of the trademark [Your Trademark]. 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 [Your Trademark] 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.

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

The most glaring red flag is the clear breach of ethics. (Yes, lawyers have a code of ethics.) This lawyer is disclosing confidential client information. They are supposed to keep a client’s intent to register a trademark confidential. There is no client; it’s a ruse.

The second issue is a clear misstatement of the law. Federal registration of your mark is not essential. In the US, common law rights protect your trademark even without federal registration. Federal registration is valuable, but not essential.?

Scam to list your trademark in an international catalog.

This e-mail offers (for a fee) to list your trademark in an international catalog of some sort.?

The red flag here is that there is no international catalog for the registration of trademarks. It’s a scam.

International trademark registration is not that simple. You must apply for registration with the appropriate authorities in the other countries where you plan to do business.?

Scam to renew your about-to-expire trademark

These scams start with a call from a USPTO Examiner. They explain that your trademark is about to expire and ask for your credit card to pay the required renewal fees.?

The red flag here is that they’re lying. Examiners will never call to request money. Trademarks can expire, but the USPTO will not call you for payment. You or your lawyer must track these renewals. The first renewal occurs between the 5th and 6th years after registration. After that, you must renew every 10 years after registration.

Don’t respond to any phone calls that ask for payment of a fee, your Social Security number, date of birth, or any other personal information. ?

The United States Patent and Trademark Office issued an Alert about this.?

Trademark applications are public information. Scammers are accessing this database and calling trademark registration applicants posing as Trademark Office employees. They request credit card information to pay fees, personal information to process your application, or to add it to an “international registry” (there’s no such thing). They use a tactic called “spoofing,” where they generate a fake caller ID to appear legitimate.

The USPTO will never call you requesting this kind of information. The USPTO doesn’t take payment over the phone. There is no reason for the USPTO to need your Social Security number or birthdate.

These scams evolve over time. But the underlying tactic is always the same. They want money by credit card, personal information, or to offer services that you don’t need.?

If you’re uncertain, call your trademark lawyer. If you filed independently, call the Trademark Assistance Center at 1-800-786-9199.

My book Invisible Assets: How to Maximize the Hidden Value in Your Business will help you understand your business’s IP and its value. It will also explain the traps and mistakes that can get you sued.?

About the Author:

Bill Honaker, “The IP Guy” is a former USPTO Examiner, a partner with Dickinson-Wright, and author of the new book, Invisible Assets – How to Maximize the Hidden Value in Your Business.

To get answers to your questions schedule a time to talk, you can access my calendar by clicking here, email [email protected], or call me at 248-433-7381.