Posts by Samuel Alen

The last thing any trademark holder wants to receive is a cease-and-desist letter from an attorney representing a brand that claims your mark is too similar to theirs. However, trademark holders can at least feel some relief that a number of these intimidating cease and desist letters are, in fact, fabricated shakedowns and not legitimate claims of trademark infringement.

All bark, no bite

Much like the USPTO impersonation emails discussed in Scam Series No.1, scammers have become quite adept at mimicking the formatting, letterheads, and even the writing style of law firms in these fake cease-and-desist letters. However, trademark holders can remain vigilant by evaluating the situation as follows:

1. Review the letter itself for obvious flaws.These could be spelling mistakes (more common than one might imagine),incomplete information about the supposed prior rights holder and their mark, or significant emphasis on urgency such as a 24-hour deadline.

2. Even if the letter seems to come from an attorney and legitimate firm, research both the attorney and the firm. Review any firm websites listed (e.g., the domain in the email address) for similar issues like typos, odd or missing information, AI-generated images, etc.Research the attorney who supposedly wrote the letter—look at their profile on the firm site and compare it to social media profiles like LinkedIn, reverse image search any headshots shown on the firm site, check the state bar to see if they’re actually listed in the state the letter claims they’re from, and see if any other information available online drastically differs from the information on the supposed firm’s site.

3. Like any other product or service, check reviews for botted or fraudulent ratings. Are the reviews totally 1-sided (all 5stars)? Were all the reviews submitted around the same time? Are the re-recurring phrases in a number of the reviews? Ask yourself questions about what makes a reviewer legitimate and how some reviews may fall short.

Again in the same vein as the USPTO impersonation scams, a trademark holder should bring any letter claiming infringement to their own attorney for evaluation. If all the signs point to the letter being a scam, either the victim or their attorney can report the incident to the state bar where the letter supposedly originates from, report the issue via an online form for internet crimes at www.ic3.gov, or contact the victim’s state attorney general.

Evolution of the Scam and USPTO's Response

This particular scam is the latest evolution in a series dating back to 2017, when a flood of trademark applications were filed at the USPTO with fraudulent specimens. Specimens, proof of the applicant’s use of a product or service in commerce, must be submitted before an application can proceed to registration. Bad actors would take an existing photograph of a product from online and digitally replace the existing trademark with the applied-for mark and submit that as a specimen. The USPTO feared that this practice could result in marks being registered that were not actually being used in commerce in the US, which could threaten the integrity of the US Trademark Register.

This led to a persistent game of Whac-a-Mole® between scammers and the USPTO, as the government implemented several security measures to try to defend against the fraudulent specimen issue, and then against other issues as they occurred. Nevertheless, new types of scams keep cropping up.

1. In August of 2019, the USPTO implemented the U.S. Counsel Rule, requiring any non-U.S. applicant to file via a U.S. attorney. The USPTO reasoned that since the fraudulent specimens were primarily coming from foreign applicants, this new requirement could potentially curb the issue.
2. Toward the end of 2019, the USPTO required a uspto.gov account to access trademark application forms. This provided more accountability as to who was actually filing the applications. While the fraudulent specimen issue reduced over time, the USPTO still found themselves dealing with hundreds or thousands of applications filed by trademark mills, companies full of non-attorneys who defrauded applicants into thinking they were being represented by competent counsel. These applications were often full of significant issues.
3. Eventually, attorneys had to start including their bar license numbers, state of registration, and year of licensure with trademark applications. This led to many bad actors reaching out to US attorneys via LinkedIn to ask if they could essentially “rent” their credentials in order to file massive numbers of applications.
4. In August of 2022, the USPTO began to require all uspto.gov users to verify their identity via id.me in order to file trademark forms. Support staff, such as legal assistants, paralegals, and law clerks, had to be sponsored by a verified attorney to access the filing system.In January of 2024, the id.me verification requirement was rolled out to cover support staff as well.

While these identity-verification methods may initially appear robust, the process of drafting an application itself leaves room for exploitation. When a filer reaches the “Attorney/Correspondence” section of an application, nothing actually prevents them from typing any name and bar number for the attorney. While examiners do check for attorney credentials during the application review process, this system is by no means infallible. The USPTO recently told ABA Journal that there have now been 30 documented cases of attorney names and credentials being listed on applications they did not file. One attorney, who has never practiced trademark law, had her name listed on over 2,300 applications!

These scammers impersonate U.S. attorneys in order to extract fees from unsuspecting clients and fraudulently file their trademark applications, but then disappear and allow the application to fall by the wayside. These scammers generally do not perform any sort of due diligence when filing the marks and the applications they file are often refused for some sort of deficiency or obvious conflicting mark. Applicants who expect to have an attorney who can handle such a refusal are then ghosted; these applications generally abandon due to failure to file a response. 

The victims here are two-fold: the clients who waste time and money investing in a doomed trademark application filed with fraudulent credentials, and the attorneys whose names are attached to these slapdash applications. 

Applicants seeking to avoid this situation should verify that their attorney is who they say they are. Make sure to check your attorney’s contact information online to ensure they are who they say they are. Be suspicious of unbelievably low filing fees for trademark applications; if it seems too good to be true, it often is. 

Attorneys should perform regular trademark searches for applications listing you as attorney by searching AT:(("FIRST NAME LAST NAME"~2) OR ("LAST NAME, FIRST NAME"~2)). If you see marks you don’t recognize, report the issue to [email protected].

As is the case with scammers in many aspects of our lives, trademark scammers often attempt to solicit payments from trademark holders and attorneys alike by providing official-presenting information, frequently with some form of fabricated urgency. They hope that the recipient will accept the charge at face value and pay up to avoid these supposed risks to theirs or their clients’ trademarks. These impersonators often reach out to applicants via phone, email, and mail.

Phone Calls:

The genuine USPTO will never call you directly to request a fee of any kind. Even if your phone identifies the call as originating from the USPTO, if they’re asking for a fee, it’s not the trademark office.

This trick is called phone number spoofing, and it makes modern scammers particularly dangerous. The USPTO has put out some valuable guidance on this issue, noting that they will never call from a classic toll-free number like 800 or even the main “contact” number, as this number is only used to take calls as opposed to making them.

So be skeptical if you do receive a call from someone who claims they’re with the USPTO. Remember: if an attorney filed your application and is listed as your representative on your application, the USPTO is actually not even allowed to contact you! If someone “from the USPTO” contacts you as a represented applicant, make sure to tell your attorney right away. 

If you did file your application without an attorney and you get a call from the USPTO, it’s a good idea to get the caller’s name and law office number and ask if you can call them back. Once you get off the phone, you can verify via the USPTO’s employee locator (https://portal.uspto.gov/EmployeeSearch/) whether that information is correct. If so, you can use the phone number listed for that employee on the website to contact them. Alternatively, you can call the Trademark Assistance Center at 1-800-786-9199 to confirm the employee’s identity. The examining attorneys at the USPTO are very aware of the trademark scams occurring right now, and will understand if you want to verify their identity before speaking with them.

One way to try to prevent future scam calls is to avoid putting any phone number on your trademark application, as this is not actually required. While scammers maystill try to reach out to you via phone even if your number is not listed on your application, leaving it off reduces the likelihood of it occurring.

E-mails:

Scammers may also pose as the USPTO via email. Many of these communications claim that a trademark holder hasn’t paid some part of their application or maintenance fee, or that a conflicting trademark has been found through a search and the trademark holder must pay a fee to resolve the issue. These emails can be dismaying to receive as a trademark holder, and sometimes even attorneys may brush past red flags when scammers roll out an official letterhead and 24-hour deadline.

If this happens, keep in mind: any emails from the USPTO will end in “@uspto.gov.” You will primarily only receive USPTO emails from 3 main email addresses, which are used to notify mark holders and attorneys of changes or updates to an application or registration: [email protected] for office actions requiring a response, and [email protected] and [email protected] for procedural status updates like Notices of Allowance, Notices of Publication, Registration, and Maintenance reminders.

If you are not represented by an attorney, you may also receive an email from a specific examining attorney asking for your authorization to make specific amendments to a specific application. Such emails will be from addresses containing an examiner’s first and last name and ending in uspto.gov. Any other emails purporting to be from the USPTO, and particularly any official-looking emails requesting fee payments, are likely scams.

Letters:

Finally, last but not least, scammers often target trademark applicants and registrants via physical letters. These often are sent by entities with official sounding names which sound similar to the USPTO and will request additional payments to “publish” your application or “renew” your registered trademark.

If this happens, check over the letter carefully. Actual official correspondence relating to your trademark application will only come from the USPTO or the United States Patent and Trademark Office, which is based in Alexandria, Virginia. Variations on that name, such as Trademark Renewal Service or Patent and Trademark Bureau, are not legitimate. Scammer letters will also often include small misspellings of an office name, or will include fine print disclaimers indicating that they are not actually a federal agency.  

You can also look up names of scammers and examples of misleading solicitations on the USPTO’s website at https://www.uspto.gov/trademarks/protect/examples-fraudulent-misleading-solicitations.

Remember, if you are represented by an attorney, make sure you tell them about any attempts that are made to contact you and talk to you about your trademark application so that they have all the information they need to keep you and your application protected.

The term “VTuber” originated from early forays into a new form of content creation, “virtual YouTubing,” in the mid-2010s as media companies and individuals alike discovered the initial popularity of content based around a talent piloting a digital model of themselves in videos and livestreams. One of the first major hits in this space was Kizuna AI, which featured a Japanese actress who produced short skits on YouTube behind a 3D motion-tracked anime-style model for the company Activ8. 

While corporate-sponsored VTubers today frequently use motion capture suits like those employed for realistic videogame character animation, many VTubers pilot their models using just VR headsets and some additional trackers on their bodies. However, the most common method of VTubing uses a 2D model tracked via an iPhone’s IR cameras.

As the name suggests, VTuber content was initially primarily distributed via YouTube. However, after interest in VTubing skyrocketed during the COVID-19 lockdown, streaming services like Twitch and BiliBili (based in China) became hotspots for these talents as well. Advances in 2D and 3D motion tracking technology, compounded by artists and model riggers developing their skills in tandem, have led to a vast and growing content-creation subsector of virtual entertainers. These VTubers can amass tens of thousands, hundreds of thousands, and sometimes millions of followers with their highly detailed and realistically moving anime-style avatars.

While indie VTubers operating on their own can choose to livestream content of their choice either individually or in collaboration with others as they like, “corpo” VTubers affiliated with VTuber agencies are sometimes only allowed to collaborate with other VTubers from the same agency. “Corpo” VTubers may also be subject to restrictions on the kinds of games they can play or topics they can discuss. 

VTubers can monetize their content in a variety of ways, including through advertising, sponsorships, subscriptions, memberships, tipping, and virtual events. Some also sell merch featuring their avatars, which can include stickers, posters, clothes, plush toys, CDs, digital backgrounds, and more.

Vtuber Trademark Portfolios

‍Large Agencies

Larger agencies such as Hololive and Nijisanji sometimes represent hundreds of virtual content-creating talents. Such companies generally retain ownership of all aspects of the VTuber’s brand, as each persona and its associated branding are developed entirely in-house. However, agencies differ in their approach to what they register as a trademark and in which jurisdictions.

Hololive, for example, holds a massive trademark portfolio of 144 registered or pending trademarks in its home country of Japan and 153 registered or pending trademarks through the World Intellectual Property Organization (WIPO). Their WIPO marks cover 37 international jurisdictions, including 44 marks at the USPTO. These trademarks include the names of agency branches (e.g., Hololive English, Hololive Indonesia), logo variations, VTuber groups termed “generations” (e.g., Hololive Myth, Tempus), and even individual VTuber names (e.g., Gawr Gura, Mori Calliope). Hololive’s push on its international branding comes alongside massive success in international markets, notably showcased in a recent collaboration with Dodger Stadium.

In contrast, Nijisanji’s trademark portfolio is heavily Japan-centered despite a sizeable English-speaking talent roster for the North American market, comprising 43 marks in Japan and 9 filed internationally via WIPO, with only 1 filed at the USPTO for the English-speaking subgroup XSOLEIL.

Comparison of the two companies’ talents and US trademark portfolios:

‍

Medium-sized Agencies

Smaller, yet still exceptionally popular “corpo” agencies like VShojo often operate on an entirely different business model that recruits talents from an existing pool of indie VTubers, allowing them to keep rights to their branding while simultaneously providing the advertising, sponsorships, and support of a talent agency. VShojo’s trademark portfolio therefore only consists of 3 registered marks at the USPTO for its name, logo, and icon. While the agency and its attorneys assist in enforcement of the talents’ brands, the ownership breakdown leads to the talents following a similar trademark registration strategy to that of indie VTubers.

‍

Indie VTubers

Indie VTubers often have follower counts rivaling and, in some cases, exceeding that of “corpo” VTubers. However, some of the largest players in the indie Vtuber space, like Ironmouse, Shylily, Filian, and Shxtou (a.k.a. Shoto) do not appear to have any trademark registrations or applications for their names at the USPTO.

This lack of trademark activity may be due to concerns surrounding privacy and costs. Whether an indie VTuber has two million or two thousand followers, a perennial concern of content creation based around an anonymous avatar is anonymity. Most countries’ trademark databases have publicly searchable ownership records. While listing limited liability companies as application owners can provide some privacy, LLC ownership can still generally be traced back to identifying information through government filings. The cost of government filing fees and attorney fees may also be a significant factor to many VTubers. Just as with YouTube, it can take a while for a Vtuber to build up a solid following and income; the cost of hiring a lawyer to register your brand as a trademark may feel daunting.

However, there are ways to alleviate privacy and cost concerns. Stay tuned for more information on this in a future post.