September 11, 2020

The United States Patent & Trademark Office (USPTO) issued a new alert this week concerning fraudulent email messages which appear to be sent by the USPTO directly to trademark owners but are, in fact, sent by third parties for fraudulent purposes.

Earlier this year, the USPTO issued a new rule applying to all federal trademark applicants, registrants, and participants in any Trademark Trial and Appeal Board proceedings, requiring an email address for each trademark owner or proceedings participant for contact purposes. The stated goal was to ensure the USPTO had trademark owner and proceedings participant contact information on file to ensure it could send USPTO notices and correspondence directly if no attorney of record is associated with the trademark record or proceeding, or if that attorney were to withdraw at a later date without the appointment of a new attorney of record. The USPTO has previously stated where trademark owners or proceedings participants are already represented by counsel, all correspondence will be sent to the attorney of record and will not directly contact the trademark owner or proceedings participant.

Based on an increase in fraudulent emails, which appear to originate from the USPTO but are in fact sent by third parties, the USPTO alert urges all trademark owners and proceedings participants to carefully review any email correspondence which appears to be sent from the USPTO “@uspto.gov” domain and to double-check the information contained in that message by contacting their attorney or independently verifying the information as contained on the USPTO website. These scam messages may include the following items:

  • Spoof the USPTO email address (e.g., noreply@uspto.gov).
  • Falsely claim that the USPTO has a new policy requiring separate registration of “clients” and that there is a “penalty” for not complying.
  • Provide incorrect USPTO trademark filing information (e.g., incorrect fee information).

As we have advised previously, we strongly recommend any client receiving email correspondence, which appears to originate from the USPTO should not respond directly in any fashion but instead contact Polsinelli to investigate and advise on the appropriate course of action. If we filed your application or are representing you in any trademark proceedings, the USPTO will correspond with us and not you directly. Therefore any third-party communication related to your trademarks is likely fraudulent. Please contact us with any questions.