CSG Law Alert: Scammers Now Impersonating Real IP Attorneys to Sell Fake Trademark Services – Including Phony Registrations

Yet another scam targeting trademark and service mark owners has recently emerged wherein bad actors impersonate real intellectual property attorneys. In this latest scheme, the owner of a trademark registration or application receives an unsolicited official-looking email from what looks like a real law firm or legal department, often with the word “Trademark” in their name. The emails sometimes appear to be sent by actual attorneys so if the recipient were to search the name online, it would look like it came from a legitimate source.

The emails usually go on to sound alarm bells and warn the recipient that another party is allegedly trying to obtain a registration for the same mark and that failure to move forward quickly could jeopardize the recipient’s ability to continue to use the mark. The fraudsters even go so far as to say that the recipient could be sued by this alleged third party or make false statements about the law – for example, saying that the recipient’s mark is not registered when it already is or that the USPTO has a “first-come, first-served” policy when it comes to owning trademark rights. This false sense of urgency is designed to coax the recipient into taking protective measures without conducting any due diligence. The email then directs the recipient to immediately call or email the sender – giving fake contact information for the attorney, business, or firm they are impersonating. Some of the impersonated attorneys have had to issue warnings that their identifies are being used for these nefarious purposes.

These scammers have tricked numerous brand owners into paying for trademark filings (fake trademark filings, to be more exact) which are not ever submitted to the United States Trademark and Patent Office (“USPTO”). Some victims even receive fraudulent trademark filing receipts and registration certificates. The swindlers also try to trick trademark owners into signing up and paying them for nonexistent monitoring services.

If you receive one of these types of emails, keep an eye out for the following factors that might indicate someone is trying to take advantage of you:

  • The email is unsolicited – you have never been in contact with the sender before and did not opt in to receiving communications from them.
  • The email is threatening and tries to convince you that your business or brand is at risk.
  • The email contains statements that are not consistent with your understanding – for example, saying you do not have a federal registration for a particular mark when you know that you do.
  • The sender is trying to get you to pay fees quickly, without time to evaluate who is providing the services for those fees. In some cases, the sender tries to get you to pay high fees quickly or, alternatively, offers incredible discounts or unbelievably low fees. These high-pressure sales tactics are designed to distract you from properly vetting your vendors.
  • Lack of written contracts, engagement letters, or similar paperwork prior to payment that outline what exactly you are paying for.

Unfortunately, scammers are constantly trying to find new ways to trick trademark owners, applicants, and registrants. The USPTO’s website provides information about current trademark scams, how to protect yourself, and even specific examples of solicitations that have been deemed to be fraudulent.  Check out https://www.uspto.gov/trademarks/protect for more information.

If you receive an email like this, we strongly recommend that you do not engage with the sender and that you do not respond by email or phone. If you think someone is trying to defraud you or if you receive an email or other correspondence concerning your trademark or service mark rights, we encourage you to reach out to your CSG Law attorney or one of the authors of this alert.