Publication

September 10, 2020Client Alert

Beware! Fake Invoices and Solicitations Continue to Plague Trademark Owners

The Trademark team at Michael Best continues to see a steady stream of misleading solicitations and invoices to our clients from private companies unaffiliated with the United States Patent and Trademark Office (USPTO) or Michael Best. Such solicitations from trademark scammers often request urgent payment—sometimes of exorbitant fees — to maintain trademarks ahead of an upcoming maintenance or renewal deadline, or to proceed with routine trademark prosecution steps such as a “fee” for publication. The USPTO provides a warning about this ongoing problem of misleading solicitations on its website.

Earlier this week, the USPTO issued an alert regarding a recent spate of fraudulent emails to trademark owners that appear to originate from the USPTO’s domain, @uspto.gov. The USPTO notes that such emails often spoof a USPTO email address (e.g., noreply@uspto.gov) and may also include false claims about USPTO policies requiring separate registration of “clients” with penalties for not complying.

In addition, one of our clients recently received a scam invoice in an envelope designed to appear as if it came from our offices. A representative example of a fake invoice appears at the end of this alert.

As the sophistication of these scammers increases, it is now more important than ever for trademark owners to be on guard for these unscrupulous solicitations. If you have any questions about notices or invoices you receive regarding your trademarks, please do not hesitate to contact your Michael Best attorney to discuss.

How They Do It

Trademark scammers use publicly available information from the USPTO website to send trademark solicitations (or fake invoices) by mail or email to owners of U.S. trademark applications and registrations. These scammers use various tactics to ensure their invoices and solicitations look legitimate, including using official-looking names and acronyms that suggest they are governmental bodies, with terms such as “Trademark,” “Registration,” “Publication,” “Office,” “Agency,” and the like. More recently, scam invoices have been sent to trademark owners in envelopes bearing the names or logos of Michael Best and other law firms responsible for the relevant marks.

In many cases, the scam solicitations or invoices create a sense of urgency, stating that trademark registrations are about to expire unless the trademark owner pays a fee to ensure maintenance or renewal. However, trademark scammers often use dates that are incorrect, suggesting that a maintenance filing is due well ahead of the actual deadline.

Global Concerns

Not surprisingly, scam communications are not limited to U.S. trademark matters. Indeed, trademark owners with global trademark portfolios should be particularly aware of misleading solicitations concerning their foreign trademarks, as trademark scammers often send misleading solicitations for such matters under names or acronyms that may look legitimate to U.S. trademark owners. Because U.S. clients may be less familiar with the formalities required for foreign trademark registrations, they may be particularly vulnerable to scam communications regarding foreign filings.

What You Should Do

If Michael Best is managing your trademark portfolio, official notices from the USPTO and foreign trademark offices will typically be sent directly to us. There are very limited circumstances in which trademark owners will receive correspondence directly from the USPTO or foreign trademark offices. Even in these situations, you will not receive an invoice.  Importantly, if we are managing your trademark portfolio, your trademarks are kept on the Michael Best docket, and we will notify you of renewal and other deadlines pertaining to your applications and registrations well ahead of any actual deadline.  If there is ever any doubt as to the legitimacy of correspondence you receive regarding any of your trademarks, please bring it to the attention of your Michael Best attorney right away.

A representative sample of a phony invoice is shown below:

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