A trademark scam is making the rounds targeting business owners through emails from varying businesses marketing trademark legal services. These emails falsely claim that another party is planning to register the recipient’s brand name with United States Patent and Trademark Office (USPTO), urging them to take immediate action to protect their trademark rights.
The scam e-mails contain claims substantially similar to this:
- I hope this email finds you in good health.
- I am writing to you on behalf of the legal department of {Alleged Legal Service}.
- We have been informed that an individual is preparing to submit an application to the USPTO for trademark registration of the brand name "{Recipient’s Brand Name}" originating from other applicant. 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 “{Recipient’s 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.
- We eagerly await your response.
- Thank you and best regards,
Why You Should Not Be Concerned
This email has several clear indicators that it’s fraudulent:
- It is nearly impossible for anyone to have knowledge about a future trademark filing unless you are the attorney handling it. Any attorney sharing such information would be in jeopardy of losing their ability to practice before the U.S. Trademark Office or even their license to practice law.
- In the United States, trademark rights are established by adoption and use, not necessarily registration. The subsequent registration by another (“Junior User”) of a name similar to one already being used by the first user (“Senior User”) will not give the Junior User priority over the Senior User.
- Many businesses receiving this scam e-mail have names that are not very strong from a trademark perspective. Because of the strength of these marks, or lack thereof, an application for registration could be refused on this basis. Understanding these nuances of trademark law can save businesses considerable anxiety and unnecessary expense.
If you receive one of these e-mails, please know that you can confidently dismiss it as a scam.
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