The United States Patent and Trademark Office (USPTO) recently released a warning regarding email scams targeting owners of trademark applications and registrations. Unfortunately, misleading notices and solicitations are nothing new for those experienced with filing applications with the USPTO. Because filings with the USPTO are public, private companies are able to gather the contact information of trademark applicants and registrants. They use this information to send misleading letters and emails asking brand owners for substantial fees in order to renew or maintain trademark applications and registrations. These companies often go by names that sound like official government agencies, which increases the confusion and the likelihood that brand owners will be duped into responding to the solicitations.
The USPTO warns that now scammers are spoofing the official USPTO email address (e.g., firstname.lastname@example.org) in their solicitations. Email spoofing is the forgery of an email sender address so that the message appears to come from someone other than the actual sender. In this case, the scammers are using email spoofing to make it appear that the message comes from an official uspto.gov account. The USPTO indicates that these scam messages falsely claim that the Office has a new policy requiring separate registration of “clients” and that there is a “penalty” for not complying. Of course, there is no such policy or penalty, and these messages can be disregarded.
It’s likely no coincidence that this latest email scam comes on the heels of a new USPTO rule that requires all applicants to provide their email address in their publicly filed trademark applications. Previously, when an applicant was represented by an attorney, the USPTO only required the attorney’s email address to be listed in the application. The latest Trademark Examination Guide, which went into effect on February 15, 2020, now requires that all new trademark applications provide an email address for the applicant. This makes it easier for scammers and other bad actors to utilize these email addresses to directly contact brand owners.
To comply with the new rule while reducing the risk of receiving unsolicited or fraudulent emails to your business email address, we recommend creating a new “trademark” email address that is only monitored for official messages from the USPTO. If you receive a trademark solicitation that you believe may be fraudulent or if you have questions about complying with the latest USPTO rules, please feel free to contact the Faegre Drinker trademark team.