CSG Law Alert: New Scam Alert – Trademark and Service Mark Applicants Encouraged to Register Domains Before Filing

The CSG Law Trademark & Copyright Group has recently learned of an entity that is scouring the United States Patent and Trademark Office (“USPTO”) database and registering domains that correspond to newly filed trademark and service mark applications within only a few days of new filings. These cybersquatters then offer the domain names for sale, with the hope that the new trademark applicant will have no other choice but to pay them in order to obtain the domain name that corresponds to the recently filed trademark application. In order to protect against this new and troubling scam, we strongly recommend that trademark applicants register corresponding domain names immediately BEFORE filing one or more applications for their marks (assuming they have not already done so and the domains are available).

This crucial preventative step is particularly important for marks that are not yet in use and for which the client contemplates filing intent-to-use based applications. While certain mark owners can attempt to recover their domains from cybersquatters under the international Uniform Domain Name Dispute Resolution Policy (“UDRP”) or the U.S. Anticybersquatting Consumer Protection Act (“ACPA”), if a mark is not registered, complainants must prove that they had substantial use in the marketplace prior to the registration of the domain name by the bad actors. Because USPTO intent-to-use based applications indicate that an applicant is not currently offering any goods or services, the complainant cannot rely on their application filing date to prove priority. Instead, they must submit persuasive evidence of prior use in commerce sufficient to create secondary meaning and thus rights to an unregistered trademark under common law. Notwithstanding the foregoing, we encourage all prospective trademark and service mark applicants, whether their marks are in use or not, to register corresponding domain names prior to filing applications. Unfortunately, UDRP and ACPA proceedings are time consuming and costly, and there is no guarantee of success.

This is another entry in a long list of scams directed at trademark owners. All USPTO trademark filings are a matter of public record. Thus, mark owners must also be on the lookout for emails and letters that look “official” as if they are from governmental agencies, but are nothing but scam solicitations soliciting credit card information from the applicant. These scams are often well-crafted and easy to fall victim to. For more information on these scams and solicitations, please contact your CSG Law attorney or one of the authors of this alert. Please be proactive and stay vigilant!