Avoiding Trademark Fraud

If you are a U.S. trademark applicant or registrant, there is a good chance you will receive a communication that appears legitimate, but is not. These solicitations often mimic the U.S. Patent and Trademark Office (USPTO) or other official-looking entities in an effort to persuade recipients to pay unnecessary fees or purchase services that offer little or no real benefit.

Unfortunately, as fraudulent trademark solicitations become increasingly sophisticated, distinguishing legitimate correspondence from fraudulent outreach is becoming more difficult for many business owners.

Common Trademark Fraud Schemes

Fraudulent trademark solicitations can take many forms, but most share one common characteristic: they attempt to create urgency and pressure recipients into acting before verifying whether a communication is legitimate. Below are a few examples of what we’ve seen lately:

• Fake Invoice

By far the most prevalent trademark scheme involves fake invoices requesting payment of fees in connection with a trademark application or registration. These communications often appear credible because they contain actual data about your registration or application pulled directly from the USPTO website, such as your mark, your registration or application serial number, and registration or filing date. The sender may claim that payment is required to avoid abandonment or advance a pending application, or to maintain an existing registration.

Some fraudulent solicitations impersonate the USPTO directly, while others present themselves as trademark service providers or filing agencies. Communications may arrive by mail, email, phone, or even text message. While the USPTO does send communications about filing deadlines and related fees, it does not send invoice-style payment demands for trademarks or request payment information by phone, email, or text. In general, trademark fees are paid through the USPTO’s electronic filing/payment system, which requires a secure login through a USPTO.gov account.

• Third Party Application Hoax

Another common tactic involves communications purportedly from an attorney representing a third party seeking to register an identical or confusingly similar mark. These notices often use urgent language like “immediate action needed,” “urgent alert,” or “final notice” to pressure recipients into engaging the sender’s services to avoid forfeiting rights to their mark.

In reality, the sender is typically not acting on behalf of any third party. Rather, the communication is an attempt to solicit business under the guise of helping to protect a registration, monitor your mark from possible threats, or expedite an application currently pending before the USPTO. References to federal statutes and the Trademark Manual of Examining Procedure (TMEP) may be included to create a false sense of legitimacy.

• Trademark Publication Offer

Some trademark owners have received offers to “publish” or “list” their trademarks for a fee. These communications are designed to resemble official government notices and may suggest that publication is necessary to protect or maintain trademark rights. In reality, these services typically list the mark in a private directory or publication that provides ZERO legal protection or benefit.

Best Practices for Protecting Against Trademark Fraud

When in doubt, it is best to pause before responding, clicking links, or submitting payment in response to any trademark-related communication that does not come from your trademark attorney. Organizations where invoices are handled by finance or operations personnel may want to brief teams on these tactics so they know to flag and escalate any trademark‑related request from anyone other than your trademark attorney before processing.

For clients that engage OGC to manage their U.S. trademark applications and registrations, we serve as your company’s “attorney of record,” which means we will receive copies of all official USPTO communications related to your filings, including filing acknowledgments, application updates, registration issuance, and reminders of upcoming maintenance deadlines after a registration has issued.

That does not mean suspicious communications will not still arrive directly. Because these notices can appear legitimate and often include accurate information pulled from public records, we encourage clients to reach out before taking action. We are happy to review communications that appear unusual or help confirm whether a request is legitimate.

Additionally, the USPTO website offers a wealth of resources to help applicants and registrants identify common fraudulent schemes, including examples of recent tactics used by bad actors and guidance for reporting suspicious activity.

GC provides outside general counsel services to companies of all sizes, offering project-based support, subject-matter expertise, and day-to-day GC services through a team of partner-level business attorneys. For more information visit: Outside General Counsel Corporate Legal Services.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.