Beware of New Trademark Scams:
For years our clients have gotten e-messages, usually from other countries, alleging (presumably untruthfully) that someone else was planning to register companywebsite.cn or companywebsite.hk or something similar. The goal of the e-message senders was to get our clients to pay for domain names that they did not need. There is a new twist on this scam. Our clients are now receiving messages from attorneys in the US with a message such as the following:
Dear [Owner of “company name”],
I trust this message finds you well.
This correspondence is from the Legal Department of [scam company]. We wish to inform you of a potential trademark registration concerning the brand name “company name” originating from a startup business. During our extensive search, your details surfaced in connection with this brand name.
Time is of the essence as another party is also expressing interest in trademarking the same business name. Failure to move forward with your registration may result in them acquiring federal rights, potentially leading to legal repercussions for your continued use of the name. This situation could extend to the point where they could file a case against you and claim ownership of your profits.
As part of our due diligence, we’ve discovered that your brand is not currently registered with the USPTO. In light of this, we are reaching out to ascertain your intentions regarding the trademark registration of “company name” Please be advised that, in accordance with the USPTO’s first-come, first-served policy, another applicant may proceed with the registration if no objection is raised from your end.
It’s crucial to emphasize that, according to the Lanham Act of 1946 (§§ 1051 et seq), federal registration is a prerequisite for securing ownership rights.
Your immediate attention to this matter is essential to safeguard your rights and prevent potential legal complications. We look forward to your prompt response.
I will look forward to your prompt response.
Thanks & Regards,
[Alleged attorney at scam company]
In reality, there is unlikely someone interested in the company’s trademark (it would be an ethical violation for the alleged attorney to reveal that if it were true) and other statements of law in this message are incorrect. While federal registration of trademarks can be helpful for many companies, it is not without risks, and it does not make sense for all companies.
If you get such a message, or you just would like to find out more about possible federal trademark registrations of your trademarks, please contact us.
Seth Nehrbass, Patent Attorney, New Orleans, 28 November 2023, SNehrbass@patents.gs, 504-813-8815.