BY DAVID A. BOAG | BOAG LAW, PLLC
Trademark scams have been around for years. The classic scam goes like this: A third-party mines the public trademark application database and contacts scores of trademark applicants directly, requesting payment for some fee or service that isn’t actually necessary.
This scam is so widespread that the USPTO has a dedicated website on the topic. A more sophisticated and dangerous version of this scam has begun to crop up, as dramatized below.
We recently filed a trademark application for a client a month or so ago—let’s call them Dr. Anderson. After filing the application, we informed Dr. Anderson that the USPTO is taking about 8.5 months to review new applications and that we would let them know when we have any news to report. As we always do, we reminded the client to be alert for scams.
Fast-forward a few weeks and we receive the following message from Dr. Anderson:
“Hey David. We’re glad to hear that our trademark application has been approved. The caller was very familiar with the content of the application and since the call came from a 571 number [note: the USPTO is in the 571 area code] I thought it was legitimate. I only got suspicious when they asked for a credit card number and said I’d need to check with my attorney.”
My ears perked up. Why was the client getting a call from the USPTO? With an examination months earlier than expected? And why was the caller asking for a credit card? Oh wait . . .
Trademark scams by phone are an alarming new frontier that promises an even higher rate of return for these bad actors. A fraudulent caller can exert influence and adapt to the applicant’s questions or unease in ways not possible with paper.
Thankfully we’ve never had a client fall for one of these scams (paper or by phone) and most simply contact us.
How can you protect yourself?
• Remember that trademark application files are completely open to the public at tsdr.uspto.gov. Even if you have an attorney (which is always a good idea), you may still receive mail and phone calls. Tell your attorney.
• The USPTO never asks for money over the phone or by email. Payments are made through the TEAS filing system.
• If you have had an attorney file your trademark application on your behalf, the USPTO will contact your attorney at all stages of the application process.
• An application fee is due at filing but then nothing else until your application has been allowed and your first renewal is due. (The sole exception is for so-called intent-to-use applications that require proof of use to be filed before registration. But the fee there is in the hundreds of dollars—never thousands.)
• Trademark registrations have to be renewed between the fifth and sixth anniversary of registration and then at every ten-year anniversary, and renewal time is fertile ground for scammers. You might receive an email from the USPTO reminder for a renewal, but it will clearly be from the United States Patent and Trademark Office, will not ask for payment directly, and will not look anything like this.
• Use an attorney. Trademark prosecution can be deceptively complex even with scammers nipping at your heels. Mistakes you make during the application process may not be evident for years.
Note: As we were finalizing this post, another client contacted us to report a suspicious call, again from the same area code as the USPTO, and again asking for a credit card. The caller told them that they would have to cancel the application if this “registration fee” wasn’t paid.