Those who have filed a trademark application before are likely already familiar with the high number of scams related to trademark registrations. These scams have been growing in sophistication and arise at every phase of the trademark registration process. Whether claiming to be the “World Trademark Register” or the “Trademarks Compliance Center,” scammers utilize publicly available information from trademark filings to send solicitations to try to trick trademark owners into paying for nonexistent or worthless services.

Recently, we have seen an uptick in a false solicitation scam being sent to numerous clients. These solicitations claim to be from a law firm that has been asked to file a trademark application by a third party that happens to be the same name used by the business being contacted. The solicitation advises that the law firm has a “company policy” that “dictates a comprehensive search” of the requested name that ends with a “48 to 72 hour window to the current brand name user for a response and approval.” It then threatens that failure to act will result in a potential loss of rights and references trademark infringement lawsuit costs. This is an effort to try and scare the company into responding while also suggesting that the scammer can help with a new filing. 

The email often includes a colorful and professional-looking signature block and in some cases, a fake website with testimonials from fake customers to further convince business owners that the outreach is legitimate. However, if you dive deeper into the information and fake client names you quickly discover that nothing is true. 

To be clear, these solicitations are untrue and should be disregarded.  A real law firm will not contact you to say that they have been hired to file a competing application.  Further, the false urgency and threats of loss of rights are common themes in these types of scams.  If you receive one of these solicitations you should always reach out to your actual trademark counsel before responding or engaging, as that can lead to further escalation and pressure by the scammer. 

The US Trademark Office has made clear that these “filing firms” scams are illegitimate and provides resources and more information on their website. The Trademark Office also provides an ever-growing list of scammers for trademark owners to utilize when managing these solicitations. 

• https://www.uspto.gov/trademarks/protect/filing-firms
• https://www.uspto.gov/trademarks/protect/caution-misleading-notices

If you have questions about a solicitation you have received or think you have been a victim of one of these scams, you should reach out to your actual trademark counsel immediately.  It is always best practice not to respond to one of these solicitations and never to pay any money without running it by your attorney first.