Scam Correspondence

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.

Lloyd & Mousilli, a leading law firm specializing in intellectual property, technology and business law, is set to host a webinar titled "Don't Get Tricked: Unmasking the Most Common Trademark Scams," in collaboration with Alt Legal, a premier provider of IP docketing software. The event is scheduled for October 29, 2024, at 2:00 PM CT and will shed light on various fraudulent schemes targeting trademark applicants and their attorneys.

The webinar, sponsored by Alt Legal, aims to help participants recognize and navigate the increasing number of trademark scams, including fake email and phone solicitations that often deceive businesses and individuals seeking trademark protection. The discussion will focus on practical advice for avoiding these common pitfalls and the steps necessary to safeguard trademarks against such threats.

Topics Covered in "Don't Get Tricked: Unmasking the Most Common Trademark Scams"

• The sinister scams trademark attorneys and applicants are facing today
• Clues and red flags to watch for in email and phone solicitations
• Ways to protect your clients from falling into a scammer’s trap
• How to "exorcise" fraudulent uses of your credentials from the US Trademark Register

The Hosts

Rachael Dickson, Senior Trademark Counsel at Lloyd & Mousilli, will lead the presentation, drawing from her extensive experience in handling trademark law cases and protecting clients from fraudulent trademark practices. She will be joined by a panel of experts—Erik Pelton (Erik M. Pelton & Associates), Kayla Jimenez (US IP Attorneys), and Ana Vinueza (Commercial Counsel in Biotech)—who will share insights and best practices to equip trademark attorneys with the knowledge to protect themselves and their clients from fraud.

""While these types of trademark scams have existed for years, they've clearly gotten worse in recent months. Thousands of applications have been fraudulently filed at the USPTO using stolen attorney credentials! Applicants are also being constantly inundated with faux threats to their trademarks and faked invoices for unnecessary services. This event is designed to raise awareness of these scams and provide applicants and attorneys with the tools to spot and combat them," says Rachael Dickson.

Webinar Registration

To register for the event, visit https://www.bigmarker.com/alt-legal/Don-t-Get-Tricked. The webinar is recorded and all registrants will receive a link to the replay.

About Lloyd & Mousilli

Lloyd & Mousilli is a boutique law firm specializing in intellectual property, technology law and related litigation. From its founding over a decade ago, headquartered in Houston, Texas, Lloyd & Mousilli has championed the strategic use of intellectual property, counseling businesses from new startups to enterprises.

About Alt Legal

Alt Legal is an innovative IP docketing solution focused on making trademark professionals’ lives easier. Driving automation across all phases of the trademark lifecycle, Alt Legal has direct connections to the USPTO and CIPO and integrates other data to provide global trademark docketing coverage. Thousands of IP professionals benefit from their one-click reporting, smart email templates, personalized email reports, calendar sync, TEAS integration, collaboration tools, and Alt Legal Trademark Protection monitoring service.

Naturally, this type of message is quite alarming, and the perceived immediacy of the time constraints may not afford recipients the time to thoroughly review the details. Some business owners, seeing this message and wanting to make sure that they are not in any legal trouble, would complete the form and make the payment to the “State of Texas.” What’s wrong with this picture? Well, for one, this is not from the Texas Secretary of State, or any governmental office. So then, where is it from, and why is it so immediate? Frankly, it isn’t and is merely a fraud attempting to solicit money from unsuspecting new business owners.

When starting a business, a founder’s time is pulled in what feels like 1000 directions at once. Being the CEO, head of product, head of marketing, and whichever hat needs to be worn at a given time can leave very little room for anything that doesn’t feel mission critical. However, there is an often overlooked aspect to building a new company that is crucial to developing a secure business. Developing a protocol on how to successfully evade scams and training the entire team on how to execute it is a relatively simple, proactive step founders can take to save headaches later on. Unfortunately, bad actors are everywhere and if you are not careful, your business will be significantly at risk.

Common Tactics

It is important to first consider the different types of tactics that scammers may use to disrupt your business.

1. Scammers try to appear trustworthy. They might guise under the pretense of being affiliated with a potential partner, or a governmental agency
2. They also try to insist a sense of urgency that creates room for mistake which is exactly what the scammers want. Because they push you into the sense of urgency, you will not have enough time to properly identify the scam which will lead to making a quick decision, potentially putting the business at risk.
3. They also use intimidation and fear to impose the sense of urgency so that you might send a payment before being able to assess the situation.
4. In order to tie up any loose ends, scammers use untraceable payment methods. This can include but not be limited to wire transfers, reloadable cards, or gift cards that are impossible to trace or refund.

Here is a recent example of the first type of scam that had been in the circuit among new businesses this year.

While a “Certificate of Fact Request Form” may look at first glance like a legitimate document, appearances can be deceiving. For starters, the form clearly states “Texas Certificate Service is not affiliated with any government or state agency…” which indicates it is not affiliated with the government or the Texas Secretary of State, despite trying to persuade you otherwise. That is not the only alarming part of the form. The fee of $77.50 is also suspicious seeing as though on the Secretary of State’s website, no similar fee can be found. It is business scams like this one that seem like they could be real that most end up falling prey to.

Defending your business against such scams

In order to keep your business safe from such scams, it is important to take a few actions to ensure that your business steers clear of such scams and more. The first step is to create a protocol that deals with various scams and more. While the list above provides the most common methods scammers use, they are notoriously creative in their means. Each year, they try to come up with more innovative schemes that you will need to be prepared for. Implementing an overall protocol to compensate for any of their tricks will benefit the business immensely. The protocol can include different types of common scams  (which can be found on the Federal Trade Commission’s website) as well as the various ways of handling such scams. This protocol can also detail the actions steps that need to be taken in the unfortunate event that your business has been misguided by such scam. Additionally, there can be information on the proper methods of storing passwords, and even the process of reviewing all transactions that occur within the business. All of these suggestions are great starting off points for the protocol, but the protocol that you create for your company should be tailored more to your businesses’ unique needs.

Proper Training

The next step is to make sure that your employees are well aware of business scammers and how to both identify and properly handle them. To accomplish this, the previously mentioned protocol must be fully incorporated into all employee manuals. All new employees must be properly trained in accordance with company protocols and policies. Also, all employees regardless of seniority should go through a continuing education process at least once a year, teaching them the newest scams that have surfaced throughout the year.

Payment Validation

Another action step that your business should take is to validate all payments. In other words, make sure that you are aware of what each payment is for, where it is going to, and how it is going there. Scammers give an immediate deadline to create a false sense of urgency which makes it tempting to put less focus and prioritization of the what, the where, and the how. However, abandoning established protocols are exactly what they are hoping their victims will do. Therefore, it is important whenever dealing with any kind of outgoing payments, to keep these three points of identification as priorities and make sure all parties involved are aware of each of these points of the financial transaction. Additionally, ensure that there is a set system in place detailing how each payment is approved within the business and make sure that the employees are trained in using this system. Each payment should have an established approval process to ensure the validity.

Adapting Technologies

It is critical to stay up to date with the latest technology. For example, as more scams have been taking place over the phone, do not take caller ID at face value. In other words, do not trust caller ID as more bad actors have been manipulating caller ID systems. Email addresses are also something that can easily be faked. Do not click on any links before you verify them! Additionally, make sure to secure all passwords and important business files. Never leave documentation of passwords anywhere on the business’ computers’ in the event that a scam does come to fruition.

Transparency of Parties

Lastly, make sure you know who is on the other side of the transactions. For example, before signing on with new business partners, make sure proper due diligence is done with regards to researching those involved. Inquire what the terms are and make sure to be aware of everything that the potential partners are asking for. See if you can find out more information about their business from other business insiders and other professionals. Do not rely on colleagues for accurate information and make sure to receive a professional opinion.

Next Steps

While all of these are strong initial suggestions to consider taking when starting up your new business, consulting directly with experienced startup attorneys will be even more beneficial as to make sure all the bases have been covered to assist in safeguarding your company against scams such as these. Having experienced startup counsel allows founders to focus on work only they can do and have more peace of mind amidst the journey of business building.

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