Trademark Scam Alert: Someone Says Another Company Is About to Register Your Trademark
We recently had a client receive repeated emails from someone claiming to be a trademark attorney. The pitch was unusual enough that we took a closer look. The sender claimed that a startup wanted to register our client’s longstanding business name as a trademark. According to the sender, his firm had discovered our client during a trademark clearance search for the startup. Because our client had been using the name first, the sender said he wanted to give our client an opportunity to file a federal trademark application before his firm moved forward with the startup. He then offered to file the trademark application for our client.
In other words: hire us to register your trademark, or we may help someone else register it.
If you receive an email like this, do not assume it is legitimate just because the sender provides the name and bar number of a real attorney.
The Attorney May Be Real. The Email May Not Be.
What makes this particular scam more convincing is that the people behind it appear to be using the identities of actual attorneys. In the communication we reviewed, the sender used the name and California bar number of a real intellectual property attorney. But the attorney’s publicly available employment and contact information did not match the law firm, email address, telephone number, or Los Angeles address used in the solicitation.
The USPTO has specifically warned that scammers are misusing the names and credentials of real U.S. attorneys in connection with trademark solicitations. So simply searching the attorney’s name or bar number and confirming that the person exists is not enough. Compare the contact information. If something does not match, contact the attorney through information you obtain independently, not through the telephone number or email address in the solicitation.
The “Someone Else Is About to File Your Trademark” Story Is a Known Scam
The USPTO has also specifically warned about solicitations claiming that another person is about to file an application for your trademark unless you act immediately. That is essentially what happened here. Our client was told that another company wanted its name, that the other company had not filed yet, and that the sender was giving our client a chance to hire him and file first. If our client declined, the sender said his firm would proceed with evaluating and filing the application for the supposed startup. That story creates an obvious reason to act quickly and pay the person who contacted you. It also happens to be based on a misleading description of U.S. trademark law.
Filing First Does Not Automatically Give Someone Your Trademark
One of the emails stated that the USPTO follows a “first-to-file” system and suggested that the first applicant generally receives priority. That is not an accurate way to describe trademark priority in the United States. Trademark rights generally arise through use. A business that has been using a trademark for years does not ordinarily lose those existing rights simply because someone else files a federal trademark application first.
That does not mean federal registration is unimportant. Registration can provide substantial additional rights and enforcement advantages, and a business that has invested significantly in a brand should seriously consider federal protection. But an unsolicited sender telling you that another company is about to take your name by filing first should not be the reason you immediately hand that sender your money.
How to Check Whether the Email Is Legitimate
If you receive one of these communications, start by looking up the supposed attorney through the applicable state bar.
Then compare the attorney’s actual employer, telephone number, email address, and other contact information against what appears in the solicitation.
Do not call the number in the suspicious email to ask whether the suspicious email is legitimate.
If necessary, contact the attorney through independently verified contact information.
You should also look carefully at the sender’s domain name. In the email chain we reviewed, communications referenced two slightly different domains. Small variations in domain names are common in impersonation and phishing schemes.
And be particularly skeptical of any trademark service promising guaranteed registration. No attorney can guarantee that the USPTO will approve a trademark application.
What Should You Do If You Receive One?
Do not pay the sender or provide sensitive information until you have independently verified who you are dealing with.
Also, do not immediately delete the email. Preserve the original electronic message. The USPTO accepts reports of suspicious trademark communications, and the original email contains header information that can be useful in identifying where it actually originated.
Finally, separate the scam from the underlying trademark issue.
The supposed competing applicant may be completely fictitious. But if you have operated under an important business or product name for years without obtaining a federal registration, that may still be worth addressing.
The right response is not to panic because someone sent you an urgent email. It is to determine whether the supposed conflict is real and then make an informed decision about protecting your trademark.
If you received an email claiming that another company is about to register your business name or trademark and want to know whether it is legitimate, Fresh IP can review the communication and help you determine what, if anything, actually needs to be done.
Micah Gunn, Esq.
Patent and Trademark Attorney