Season 5 Ep #7 Recognizing and Avoiding Trademark Scams and Hoaxes

IP Goes Pop!®, hosts Michael Snyder and Joseph Gushue are joined by Jason Lott, Managing Attorney for Trademark Customer Outreach at the US Patent and Trademark Office (USPTO), to explore the evolving landscape of trademark scams in the digital age. Known for his extensive expertise, Jason shares valuable insights into how scammers operate and practical tips to stay protected.

While clever con artist movies like Catch Me If You Can (2002) and Ocean’s Eleven (2001) may make us root for the “schemers,” real-life scams targeting trademarks are far from entertaining—they’re costly and damaging. This episode unpacks the deceptive tactics employed by scammers and offers actionable advice for safeguarding trademark applications and registrations.

The episode is divided into scams in each of the three phases of obtaining a trademark: prior to the application filing, during prosecution of a trademark application, and post-registration. Opening with scams affecting  the period before filing a trademark application, the panel talks about misleading solicitations, fake emails, false infringement notices, and unauthorized legal practices by unqualified individuals. Such scams can void applications, cause financial losses, and create significant setbacks for businesses.

During phase two- the trademark application prosecution process, entrepreneurs often face fake invoices resembling official USPTO correspondence and spoofed phone calls designed to extract unnecessary fees or sensitive information. These tactics can create financial and legal challenges, complicating an already intricate process.

Even after trademarks are secured, scammers continue their efforts with post-registration scams, such as fraudulent trademark registration renewal notices, exploiting brand owners’ urgency to maintain their protections. These scams not only waste resources but also risk invalidating trademarks if legitimate renewals are missed. Jason emphasizes the importance of understanding renewal timelines and identifying fraudulent communications.

To combat these threats, Jason highlights the USPTO’s comprehensive resources, including educational materials and reporting tools, designed to assist businesses at every stage of the trademark process. These resources act as a metaphorical superhero team, empowering brands to fend off the bad actors of the trademark world.

Trademarks play a critical role in a company’s success, establishing trust and stability for both customers and businesses. Through the USPTO’s guidance, listeners gain the tools to avoid scammers and protect their trademarks with confidence.

USPTO Resources to Protect Yourself and Your Business from Trademark Scams:

• Trademark Application Process: learn the steps involved and the timeline required for attaining trademark protections to avoid being duped.
• USPTO Recognizing Common Scams: explore the most common scamming tactics and what to be vigilant for throughout the process.
• USPTO - Misleading Solicitations: USPTO’s updated list of known fraudulent solicitations.
• USPTO fee schedule: understand the fees associated with the legitimate trademark process.
• USPTO Trademark Assistance Center (TAC): get support for trademark-related queries and verification.
• USPTO - Trademark Protection: webinars and guides on recognizing and reporting scams.
• USPTO Subscription Center: subscribe to stay updated, on news, and resources from the USPTO.

Timestamps:

(1:06) Introduction to Trademark Scams and Hoaxes & Guest Introduction

• The rise of trademark scams

Introduction of Jason Lott from the USPTO and his role in Trademark Customer Outreach

(4:17) Movies About Scams and Deception

• Catch Me If You Can (2002) and its con artist theme
  • Leonardo DiCaprio
• The Sting (1973) and its portrayal of elaborate scams
  • Robert Redford
  • Paul Newman
• Ocean's Eleven (2001)
  • Frank Sinatra

(9:30) Trademark Scams Overview: Before, During, and After Registration

(10:25) Pre- Trademark Application Scams

• gov
• Misleading offers for trademark services
• Non-attorney filing firms
• Advice on verifying the legitimacy of service providers
• Impact of scams on small business owners

(14:26) Sophistication of Scams

• Trademark search email scam

(19:03) Unauthorized Practice of Law

• Explanation of non-lawyers offering legal advice
• Risks of using unqualified trademark services
• Impact on the Trademark Application Process

(23:47) Trademark Scams During Trademark Application Prosecution

• Solicitation scam
  • fraudulent requests for additional (made-up) and inflated fees
• Spoofed USPTO calls (571 numbers)
• Tips for identifying fake correspondence
• USPTO Official Payment Platform

(31:18) Post-Registration Trademark Scams

• Maintenance fee scams
• Section 8 & 9 Renewal Window Scams
  • Explanation of proper renewal timeline
• Strategies for verifying legitimate renewal requests
  • Red Flags: Unofficial logos, poor grammar, requests for immediate payment, and sender addresses not from @uspto.gov.
  • USPTO’s Fraud List: Regularly check USPTO - Misleading Solicitations the USPTO’s updated list of known fraudulent solicitations

(36:05) USPTO Resources for Recognizing and Avoiding IP Scams

• FCC on Spoofed Phone Calls
• Cross-Verify Fees: Compare with the official USPTO fee schedule
• Direct Contact with USPTO: Verify any suspicious notices by contacting the USPTO Trademark Assistance Center (TAC)
• Educational Webinars: The USPTO offers webinars and guides on recognizing and reporting scams via USPTO - Trademark Protection

(38:14) Final Thoughts

• Stay Informed: Regularly review the USPTO’s resources and sign up for email alerts via the USPTO Subscription Center
• Official Channels: Make payments and communicate only through official USPTO contact points.
• Professional Consultation: Seek guidance from registered attorneys, particularly for foreign entities navigating US registration requirements.