Trevor Little

This weekend we were alerted to a new trademark solicitation letter, the latest in a series of campaigns that seek to dupe users into paying for trademark services on the mistaken assumption that they are paying required fees to the USPTO. Faced with a seemingly endless wave of such scams, users have told us that they want more to be done to fight this scourge.

In the cover story of the latest edition of World Trademark Review, which is now available to subscribers online (with hard copies currently being mailed out), we reveal the leading law firm and corporate filers at the USPTO. We also presented the findings of a survey of filers, which investigated user sentiment towards the office’s systems and processes, and explored some of the prevailing challenges in the filing landscape.  One such was the prevalence of solicitation campaigns. 

Trademark applications at the USPTO increased by 10.7% in fiscal year 2015. It is surely no coincidence, then, that solicitation campaigns targeting applicants are also becoming more prevalent (one lawyer told us: “Once a week I have a client ask me about one of these”).

The scourge of invoices that mimic official USPTO communications, and the potential for these to be paid on the mistaken assumption that failure to do so will see registrations lapse, can result in the misdirection of trademark budget and cause headaches for counsel. Britt L Anderson, partner at K&L Gates, comments: “Many of these services cost significant money for the parties who are duped into paying them. Continuance of these solicitations tends to reflect badly on every party connected to the industry. It is also highly confusing for trademark owners, who need to devote extra resources to making sure that their rights are not affected by these schemes.”

The USPTO has created web pages to alert users of non-official solicitations for payment, and sends a warning and a link to the solicitations webpage in each office action regarding a trademark application. A similar warning on bright orange paper is included when the USPTO mails the paper registration certificate to the registrant. However, when we spoke to users, there was a feeling that more regular outreach is required and a number of suggestions were put forward, including: 

  • providing an ‘opt in’ on TEAS Plus and TEAS Reduced Fee applications which would allow applicants to receive relevant notices via email or text message when a new scam is detected;
  • placing warnings on filing receipts and notices of publication;
  • proactively sending notices to trademark owners or alternatively to law firms, which can then forward such documentation to their clients; and
  • permitting only credentialed use of the database, in a bid to prevent data-mining by third parties.

There was also a desire to see the USPTO do more to take the fight to those behind such campaigns. However, a spokesperson told us that, “due to a lack of statutory authority to institute legal proceedings, the USPTO cannot take legal action on its own against companies issuing confusing solicitations.  It is limited to sending cease-and-desist letters to those companies whose solicitations come too close to infringing the USPTO name or logo, and trying to negotiate changes in their solicitation forms”.

In a bid to enable action, the spokesperson explained that the office is liaising with other agencies that are empowered to act, adding: “Due in part to the USPTO’s efforts, US agencies with law enforcement jurisdiction, including the Department of Justice, the Federal Trade Commission, and the United States Postal Inspection Service, have become more attuned in recent years to this U.S. and global concern. The USPTO is providing its full support to those US law enforcement officials now working on this issue.”

Such efforts grabbed headline in January when the US Department of Justice charged two California residents with in a superseding indictment in connection with a bank fraud scheme involving the proceeds of a mass mailing scam targeting holders of US trademarks (involving services related to trademark registration and monitoring offered by the Trademark Compliance Center and the Trademark Compliance Office).

To facilitate further action, where users have been duped the agency suggests that a complaint is filed at the Federal Trade Commission (FTC). Additionally, it recommends that state consumer protection authorities (many of which have the authority to issue investigative subpoenas and file complaints against companies engaged in deceptive practices directed toward state residents) are contacted.

However, one commentator told us that more can be done to take the fight to scammers, suggesting that “the USPTO, Congress and FTC should be more aggressive in going after these companies, providing users with an ability to see real dollars if they sue for unfair trade practices, false and deceptive trade practices, false advertising, etc”.

Whether the USPTO will step up its efforts, and what impact this will have on office operations and efficiency, remains to be seen. However, user frustration over the prevalence of solicitation campaigns is clear. And with an ever-expanding pool of applicants to target, these scams show no sign of going away. 

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