Scams and schemers have been part of recorded history since at least 300 BC, according to multiple sources including Experien and Moody's. Scams keep working, continuing to evolve. And in our current, modern world, trademark registration hoaxes are on an uptick.
The Better Business Bureau recently issued a Scam Alert concerning patent and trademark renewals that target business owners. These fake emails warn companies that another organization is trying to register under the business's name—and if the organization fails to respond within 24 hours (or 48 to 72 hours), it will forfeit its legal rights to its brand name. The email urgently threatens the email recipient that it could pay substantial financial damages and face lawsuits costing up to $750,000. The scammer often sends repeat "warning emails."
Other phishing emails fraudulently alert companies that they have not trademarked their name and they need to take action and pay money to fix the situation.
These shams are not just for the naïve. In 2021, a South Carolina federal court sentenced a trademark renewal fraudster, Viktors Suhorukovs, to more than four years in federal prison fining him $4.5 million in restitution. For three years, with companies named the "Patent and Trademark Office, LLC" and "Patent and Trademark Bureau, LLC," Suhorukovs defrauded over 2,900 victims. In a plea agreement, he admitted to receiving 917 payments exceeding $1.2 million. Suhorukovs misrepresented to trademark registrants that their registrations were going to expire. He then charged exorbitant fees for trademark registration renewals, which he did not and could not perform because he was not a US-licensed attorney.
This type of fraud has all the ingredients for an ideal, low cost-high reward grift: a valuable piece of property in an arcane field with easily obtainable public information, and well-meaning, busy business owners attempting to meet deadlines to protect their organizations' brands.
Today's resurgence in trademark-related rackets is a reminder for businesses to beware.
Below are some best practices if dubious communications about renewing your trademark come your way:
- Review the correspondence carefully.
- Be suspicious if you receive an email, phone call, voicemail, text, letter or other communication saying something is urgent and demanding money or a response as soon as possible.
- Be especially wary of communications offering:
(1) to provide legal services;
(2) to handle trademark monitoring services;
(3) to record trademarks with U.S. Customs and Border Protection; and/or
(4) to "register" trademarks in a private company directory or registry. - Consider the sender's email address or phone number (or
lack thereof) and whether this is a different form of communication
than you normally receive from your trademark attorney. The only
legitimate correspondences you should be receiving are from:
(1) the U.S. Patent and Trademark Office, which will communicate via an @USPTO.GOV email address;
(2) your trademark attorney, with whom you should be familiar; (note: scammers can also try to impersonate your lawyer, since that information is publicly listed);
(3) a third party asking you to cease and desist use of your trademarks or enter into an agreement or discussion with them about your trademarks. (This last category is the trickiest, since many legitimate third parties will use @gmail addresses or leave messages without phone numbers. Some fraudsters even may seem much more legitimate in comparison.)
The USPTO sets forth that between the fifth and the sixth year, and again between the ninth and tenth year, following registration of a trademark, a trademark holder must file a Declaration of Use and/or Excusable Nonuse. Subsequently, every 10 years, the trademark holder must renew registration.
As a ground rule, consult your Frankfurt Kurnit trademark attorney before paying money in response to communications regarding the validity or renewal of your trademark, or if you are uncertain whether a communication is legitimate.
This alert provides general coverage of its subject area. We provide it with the understanding that Frankfurt Kurnit Klein & Selz is not engaged herein in rendering legal advice, and shall not be liable for any damages resulting from any error, inaccuracy, or omission. Our attorneys practice law only in jurisdictions in which they are properly authorized to do so. We do not seek to represent clients in other jurisdictions.
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