Tim Lince

The US Patent and Trademark Office (USPTO) is stepping up its aggressive pursuit of trademark solicitation scams with the creation of a “first of its kind” roundtable event. Talking to World Trademark Review, USPTO Trademark Commissioner Mary Boney Denison confirmed that the agency is “increasingly concerned” about fraudulent trademark invoices and revealed plans to work with international counterparts to combat the problem more effectively.

The issue of fraudulent trademark solicitation campaigns has been ongoing for a number of years now. It takes the form of a physical letter claiming to be from an official trademark office or association, and is commonly designed to look like an invoice. It will often offer to “register” trademarks or to “record” them with customs officials, with each claiming a substantial fee is required to be paid. The letters are sent to names and addresses mined from trademark databases, and the letterhead will often include a name that is confusingly similar to official sources (eg, “PTO: Patent & Trademark Office”, “WIPO: World Intelligent Property Office”). Shockingly, a recent solicitation campaign in New Zealand revealed that upwards of 8% of fake invoices lead to payment.

As one of the most lucrative markets in the world, it is unsurprising that a high percentage of solicitation campaigns are targeted at rights holders in the United States. Despite active and ongoing awareness campaigns from organisations including INTA, WIPO and the USPTO, there are regular reports of new fraudulent invoices being sent to rights holders across the country. In fact, while outlining the current strategy to combat this activity, Denison revealed that there has been an increase in scams in recent months. “The USPTO has been working on this issue for many years,” she stated. “But as complaints have grown, we have become increasingly concerned.”

In response, the USPTO has partnered with the Trademark Public Advisory Committee (TPAC) to host a roundtable focused on raising awareness and strategizing about how to tackle fraudulent solicitations. The event, scheduled for July 26 at the USPTO’s headquarters in Alexandra, will be attended by senior staff members at the office (including Denison) and most, if not all, TPAC members. Furthermore, representatives from the Federal Trade Commission, the US Department of Justice, the US Postal Inspection Service, US Customs and Border Protection and the Small Business Administration have been asked to participate. Formal invitations have also been sent out to the American Bar Association (IP section), the Association of Corporate Counsel (ACC), the American Intellectual Property Law Association (AIPLA), the Federation Internationale des Conseils en Propriete Intellectuelle (FICPI), Intellectual Property Owners Association (IPO) and INTA.

Denison notes that the USPTO welcomes participation (by contacting office representative Leigh Lowry) from other associations, as well as IP attorneys with experience of clients asking about fraudulent solicitations and – crucially – victims of such activity. “It is important for brand owners that have been fooled into signing up for services which were not performed (or performed deficiently) by these scammers, or into paying ‘fees’ to them, to attend the roundtable to emphasise the magnitude of the problem for all trademark owners and to assist the government with brainstorming about creative ideas for attacking this difficult issue,” she explained. “For brand owners unable to attend in person, we also invite written submissions to the USPTO.”

But the roundtable event is not the only tangible sign that more is being done to tackle solicitations scams in the US. Last month, a fifth person was convicted for his role in a trademark scam that laundered thousands of dollars from unsuspecting rights holders. But while the USPTO itself lacks independent investigatory and litigation authority, it is using July’s event as a way to strategize on how to more effectively raise awareness of the issue and to identify which third parties would be best to enlist in anti-solicitation activities.

As the New Zealand solicitation scam demonstrated last year, fraudulent campaigns are a very international affair – with research conducted by World Trademark Review suggesting that many originate in Eastern Europe. Denison acknowledged this, and said that the USPTO currently communicates with the EUIPO and the Japan Patent Office on the issue. In a welcome development, she also revealed the office plans to significantly increase its global outreach on the matter: “We intend to make further overtures to our foreign counterparts in the coming months to learn more about the international impact of this issue and to discuss best practices for combating the problem.”


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