Trademark and patent owners and applicants need to be more vigilant than ever when it comes to notices concerning their patent or trademark properties. If Ice Miller handles your or your business’s intellectual property (IP) filings and maintenance, then you can rest assured that any email, fax, or phone call that you receive from anyone other than your counsel reporting an issue involving the U.S. Patent and Trademark Office is a scam. If your intellectual property is handled internally or through another service provider, then read on to learn about some of the devious tactics employed by today’s IP scammer.

Emails Warning of a Third Party Interested in Registering Your Mark

A tactic that has been used for many years by scammers claiming to represent Chinese businesses has recently been adopted by scammers claiming to be based in the U.S. This scam involves an email to the marketing head of a business (or another internal email at the business that the scammer can identify) reporting that the scammer has been asked by another client of the scammer’s, often labeled a startup, to register the business’s main brand. The scammer usually indicates that it was unable to find any registrations owned by the business and then offers to help the “affected” business by registering the business’s main brand for the business. These emails are very threatening and will increase in frequency and tone if the victim responds in any way to them. These scams typically come from scammers who imply that they are lawyers or paralegals.

There are no legitimate businesses that altruistically receive new client trademark work, go out and search for similar marks, and then offer to work for the owner of the similar mark instead of their new client. If undertaken by a lawyer or paralegal, such behavior would violate ethics obligations and put the lawyer’s or paralegal’s license at risk.

Anyone who receives such a message should block the email address to prevent further contact from the scammer. If a response was sent to the scammer, and the scammer continues to harass the client, ask your counsel to stop the harassment by sending a demand that the scammer communicate only with your legal counsel. The scammers have not followed up after such a message.

Mail, Fax, or Email of a Notice for “Renewal” of a Patent or Trademark

Two examples of scam forms sent to one client, theoretically by two different businesses, asking for instructions for payment of a patent maintenance fee can be viewed here and here. Hallmarks of the scam pictured in these documents include:

• A correspondence address that is not that of legal counsel. If the notice were legitimate, only your law firm or your other designated representative would receive the notice;
• A “business” name that kind of sounds like “U.S. Patent and Trademark Office” (USPTO), but is never exactly that;
• A reminder sent a few months before the earliest date by which action could be taken in the USPTO with regard to the patent or trademark. The scammers know that legitimate notices from your counsel will be sent around the earliest date by which action could be taken, so the scammers try to confuse victims to believe that their intellectual property could be in jeopardy before they hear from their counsel;
• A helpful admission in the fine print that the scammer is a private business not endorsed by the U.S. government; and
• The scammer includes a return email address that is not a .gov address.
• One of the sample scam notices is theoretically from a business that specializes in trademark renewals, yet the notice is for a patent maintenance fee.

Anyone who receives such a solicitation should simply delete it or throw it away. Your legal representative would be pleased to confirm the scam nature of any such document if you are not sure.

Urgent Call from a USPTO Phone Number

This scam involves spoofing a legitimate USPTO phone number and calling the victim to demand urgent payment of fees. Your caller ID says that the call is coming from the USPTO, and the phone number checks out as being one listed on the actual USPTO website. However, in all cases, the caller and the caller ID are definitely not legitimate.

The caller claims to be someone from a division of the USPTO. The caller claims that your patent or, more typically, trademark, has a problem because “the charge had not gone through” for some activity with your case. The caller has the serial number for a case owned by you and demands to know what you are going to do about the charge. If you ask the caller for his or her phone number so that you may investigate the matter and call the caller back, the caller will refuse to give her or his number, saying that the caller is calling from a federally recorded line and must only call you.
 
The caller has obtained the serial number for your case and your phone number through information publicly available on the USPTO’s website. One hallmark of this scam is that the matter is urgent. Those familiar with working with the government will understand that little that the government does is undertaken with great haste.

Most tellingly, however, is the claim that something is wrong with your case because payment was not made. If proper payment is not received by the USPTO, the USPTO may send your counsel a written notice of fee deficiency, but the USPTO does not make calls requesting payment. With regard to trademarks in particular, if the USPTO does not get your money at the time of filing, it is not going to send you a filing receipt and then call you about it. The transaction will simply be declined.

Ice Miller’s Data Security and Privacy team spoke with the local FBI Financial Crimes Supervisor concerning this particular scam. Although the local FBI office had not heard of this particular scam, the FBI is familiar with similar scams in which scammers use information on public federal databases to attempt criminal or fraudulent acts.

Fight Back and Learn More

The FBI and the USPTO recommend that victims of any scam file a complaint either with the Internet Crime Complaint Center or the Federal Communications Commission. Ice Miller is happy to help you make such a filing if you provide us with the details of the scam. Reporting these scams helps these agencies identify trends and focus their resources to stop the most prolific scammers. More information concerning these and other scams involving trademarks is included in the recent USPTO webinar, Trademark scams: How to avoid them and what to do if you get fooled.

Most importantly, contact an Ice Miller intellectual property attorney to assist with questions and any action that may be necessary to address the scam. The sooner you ask for help, the more likely Ice Miller can help you remediate the issue.

This publication is intended for general information purposes only and does not and is not intended to constitute legal advice. The reader should consult with legal counsel to determine how laws or decisions discussed herein apply to the reader's specific circumstances.