Beware of Scams Targeting USPTO Trademarks and Service Marks: Protect Your Intellectual Property

By Kelsey Rechetnik

June 21, 2023

Intellectual property including trademarks and service marks, collectively referred to as “Mark” or “Marks,” are valuable assets for businesses across various industries. Properly maintaining and protecting intellectual property prevents other businesses from using a company’s idea or product. In order to obtain protection for intellectual property, an application must be filed with the United States Patent and Trademark Office (USPTO). Once a Mark is registered, the USPTO requires the filing of various renewal applications in order to maintain protection of the Mark. Keeping up with maintenance requirements and renewal filing deadlines can be a daunting task, especially for companies that own numerous Marks with the USPTO. Scammers often deploy schemes that attempt to take advantage of and prey on unsuspecting Mark owners. Some common scams include the following:

• Unauthorized Solicitations:

One prevalent scam involves unsolicited communications sent via mail or email, claiming to be from an official government entity associated with the USPTO. These fraudulent solicitations typically request immediate payment for services related to a Mark’s registration or maintenance. They often mimic official USPTO correspondence, including logos and design elements, leading owners of registered Marks to believe the request is legitimate.

To protect yourself, it’s crucial to remember that the USPTO only contacts applicants or registrants through official channels, all official USPTO correspondence about applications and/or registrations will be sent from the USPTO’s office in Alexandria, Virginia, and all emails will be from the domain “@uspto.gov.”  Always double-check the sender’s details, email addresses, and website URLs to ensure they are from a genuine source.

• Misleading Monitoring Services:

Another common scam involves deceptive monitoring services. Scammers may send invoices or notices claiming to offer monitoring services for Marks. They often use fear tactics, suggesting that failing to subscribe to their services could result in loss of rights or missed infringement opportunities.

It’s essential to carefully review any monitoring service related to your Marks and to conduct due diligence by researching the provider, checking for reviews or complaints, and ensuring the offer aligns with your specific needs.

• Fraudulent Renewal Notices:

Trademark and service mark renewal scams are particularly prevalent, as they exploit fear of losing valuable intellectual property rights. These scams involve fake invoices or notices resembling official USPTO documents which are sent to Mark holders demanding immediate payment for renewal.

To avoid falling victim to this scam, it’s important to understand the USPTO renewal and maintenance processes. The USPTO typically sends reminders to Mark owners and (their attorney of record if applicable) via official correspondence at least one year in advance of the renewal deadline. Always refer to the USPTO’s official website or consult legal counsel to confirm renewal requirements and ensure compliance with the established process.

Protecting Yourself from Scams:

Here are some essential tips to protect yourself from scams related to USPTO Marks:

• Educate Yourself: Familiarize yourself with the USPTO’s official processes, communications, and fees. Regularly visit the USPTO website and stay updated with any news or alerts regarding scams or fraudulent activities.
• Verify the Sender: Always verify the sender’s details, including email addresses, website URLs, and contact information. Legitimate communications from the USPTO will have official email addresses ending in “@uspto.gov.”
• Be Cautious with Payment Requests: Exercise caution when asked to make immediate payments. Official USPTO fees are paid through the TEAS or the USPTO’s official payment platform online. Avoid making payments through unfamiliar or unverified channels.
• Consult Legal Professionals: Seek advice from intellectual property lawyers experienced in trademarks and service marks. They can guide you through the process, help identify scams, and provide peace of mind.

Conclusion:

While the USPTO provides crucial services for protecting intellectual property, it’s essential to remain vigilant and aware of potential scams. By staying informed, verifying communication sources, and seeking professional advice, you can protect your institution’s intellectual property and your business from scammers.

About the Author

Kelsey Rechetnik

Kelsey Rechetnik is a Paralegal at SW&M with experience in the legal and financial fields. She assists several Partners and Senior Counsel in insurance, contract reviews, bond claims, and intellectual property matters. Kelsey is meticulous in her research, which is […]

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