Federal Agencies Tackling Trademark Scams
Guest Blog from the US Patent & Trademark Office by Commissioner for Trademarks Mary Boney Denison
Some trademark applicants and registrants have paid fees to private companies while mistakenly thinking they were paying fees required by the USPTO. To combat this problem, last week, the USPTO co-hosted its first ever public roundtable on fraudulent solicitations with the Trademark Public Advisory Committee. The objectives of the event were to educate the public about the problem of misleading or fraudulent advertisements for trademark services, to learn more about what other government agencies were doing, and to brainstorm new ideas for tackling this complex issue.
Joe Matal, who is performing the duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, spoke at this roundtable, as well as 11 public speakers and 7 federal speakers from the USPTO, U.S. Department of Justice (DOJ), U.S. Postal Inspection Service (USPIS), Federal Trade Commission (FTC), Small Business Administration (SBA) and U.S. Customs and Border Protection (CBP). Matal urged all of the participants to “work together to corral and fix this problem.”
The USPTO has worked closely in the past with other federal agencies on criminal prosecutions for fraudulent trademark solicitations. During the roundtable, representatives from DOJ and USPIS spoke about the recent criminal convictions in California of five individuals, including employees of a bank, who ran a lucrative trademark scam and knowingly laundered the proceeds. Two have been sentenced and the remaining three are scheduled for sentencing in August. To learn more about this case and the USPTO’s role in it, read my blog from December 2016.
Trademark scams range from offers to file renewal and maintenance documents, to offers to record marks with U.S. Customs and Border Protection, to monitoring services, to recordation in useless databases. Some of the scammers take consumers’ money and deliver nothing. For instance, during the roundtable, the American Intellectual Property Law Association cited an example of a restaurant that mistakenly paid a scammer to file maintenance documents for a registration. The restaurant relied on the assumption that the filing would be made. Only when the restaurant sought legal counsel about enforcement against an infringer did it learn that the scammer filed nothing and the registration had been cancelled. Others scammers actually perform work but at exorbitant prices. One speaker at the roundtable had filed three civil law suits against different scammers.
At the USPTO, we offer warnings in trademark application filing receipts, in emails transmitting office actions, and with registration certificates. On the informational page of the USPTO website on trademark solicitations, customers can watch a brief video on how to identify misleading notices, and see a list of fraudulent entities we’ve already identified. For further information, customers can consult our Basic Facts Booklet on protecting trademarks, or contact us directly at TMFeedback@uspto.gov. While the USPTO lacks the power to file lawsuits against the scammers, we have issued cease and desist letters against them and pursued others for unauthorized practice of law.
Anyone who receives a fraudulent trademark solicitation should file a complaint online with the Federal Trade Commission or call 1-877-FTC-HELP. This is key in order to help the government tackle the ongoing solicitation problem, and USPIS and DOJ use the FTC complaint reports to decide which companies to pursue criminally. When filing a complaint, customers should include the solicitation and the envelope with the postmark, as well as a copy of the front and back of any cancelled check paid to a scammer when applicable. Scammers should be reported to the FTC as soon as possible because they frequently change mail drop addresses and other traceable information (often monthly), and delay can hinder or preclude criminal investigations. Note that lawyers can also report solicitations for their clients. The FTC has additional information on scammers and government imposters on its website.
The USPTO continues to work hard to fight solicitations from companies fraudulently promising to protect trademarks. We plan to issue a report on our findings from the roundtable and will continue to collaborate with other federal agencies to educate the public on this issue and identify those responsible.