IACC Alert: Trademark Registration Scams
April 7, 2021
Trademark owners, beware! Registration Scams on the Rise
It’s no secret that counterfeiters are constantly seeking new ways to fool consumers and to exploit the goodwill of reputable brands. One newer approach, of which we’re hearing increasing reports, involves counterfeiters’ attempts to fraudulently register new marks in the name of well-known companies.
One IACC member reached out to describe an individual’s recently filed application with the U.S. Patent and Trademark Office (USPTO), which made use of the member company’s marks and its registered office address, while substituting the individual’s own email address. Had the application not been discovered, and proceeded to registration, the fraudster may then have attempted to use the registration to facilitate other fraudulent activities. Comparable schemes have been used in the past to attempt to gain control of online storefronts on e-commerce platforms, or in an effort to legitimize counterfeiters’ illicit sales.
Representatives from the USPTO are encouraging rights-holders to remain vigilant in monitoring their existing registrations for any unauthorized changes, and to monitor the TESS database for any fraudulent applications in their companies’ names. The office has established a working group to address these and other fraudulent activities; if you’re aware of any such issues, please report them to TMScams@uspto.gov. We’ve also been informed that the USPTO will be rolling out login enhancements later this year, to include identity verification and role-based access tools, in an effort to prevent such scams from occurring. Rights-holders are also advised to consider adopting similar protocols to ensure the accuracy of their IP recordations with U.S. Customs and Border Protection.