Email Scams - Misleading Emails Regarding Trademark Protection

We have recently been notified of clients receiving misleading emails, phones calls and texts about trademark protection. There have been several scams and fraudulent emails over the years but these scammers are becoming increasingly sophisticated including using calls and texts. We wish to alert all clients to be wary of any official looking emails or texts from anyone that appears to be specializing in trademark protection. 

In the newest scam, seemingly legitimate companies are sending a notice indicating that a third party is trying to register your trademark with the USPTO and stating that if you do not act quickly you will lose the right to your trademark and may even be considered an infringer. Please do not respond to these emails as these are scam emails attempting to obtain more information about your company. Below is an example of an email that was sent recently to a client:

We have received an application for the registration of the trademark “________”. The applicant is seeking legal protection for this brand name. We are currently reviewing the application to ensure compliance with trademark regulations and will proceed with the necessary legal procedures accordingly. During our research, we came across your information and discovered that this brand name is not currently registered with the USPTO, leaving it open for registration by any interested party.

Given the USPTO's policy of processing applications on a first-come, first-served basis, the other applicant will be granted the opportunity to proceed with their registration if you are not actively using the brand name “__________" in commerce or are unwilling to seek trademark registration for it.

We kindly request that you respond to us promptly. If we do not receive any objections from you, the other applicant will be permitted to initiate their registration process, which will follow the standard examination and filing procedures established by the USPTO.

It's important to note that, as stipulated in the Act of 1946, specifically §§ 1051 et seq, federal registration of your mark is essential to establish and protect your ownership rights.

This language is a scare tactic to get you to respond and take likely unnecessary action. There are similar emails that are circulated about domain name protection. Scammers are also starting to send similar texts and making phone calls about trademark protection.

Please note that there are other scams where companies try to replicate official US Patent and Trademark (“USPTO”) notices that indicate that your trademark registration is about to expire and you need to send them money in order to renew the registration. While the USPTO will send out notices that your trademark is expiring, the USPTO will never ask for money. The USPTO itself has tried to notify the public of these scam companies and has even prepared a presentation on such trademark scams that can be seen here.  

We ask all of our clients to be wary of any unexpected emails, calls or texts regarding your trademarks and seek known and reputable counsel before taking action or making any payments.