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Home | HS Blog | U.S. Trademark Scams are on the Rise . . . . SO BEWARE! How To Apply A Trademark In Taiwan
Trademark scams are on the rise, as the U.S. Patent and Trademark Office (USPTO) warns. If you get a concerning email about your trademark, there is a good chance it’s a trademark scam — but sometimes unsolicited emails are legit (or sort of), in the sense that they are alerting you of a real issue. For that reason, it is always a good idea to check in with a trademark lawyer that you trust when you receive this kind of communication, both to avoid falling prey to a trademark scam, while also ensuring that you are on top of any trademark-related issues.
The USPTO publishes a list of known trademark scammers. This list, however, is not even close to being exhaustive. Yet it usually isn’t that difficult to pick up on trademark scams.
Here is an example that one of our clients received, with details changed for confidentiality reasons:
I hope you’re doing well. I’m writing on behalf of Trademark Whiz’s Legal Department to let you know about a possible trademark registration for the business name “Mofongo & Sushi” We found that your details are linked to this name.
Acting quickly is important because someone else is interested in registering the same name. If you don’t move forward with your registration, they could gain legal rights, and you might face consequences for using the name. This could even lead to legal action against you to claim ownership of your profits.
We noticed that your brand isn’t currently registered with the United States Patent and Trademark Office (USPTO). We want to know if you plan to register “Mofongo & Sushi.”
Keep in mind that if you don’t object, someone else might register it first under the USPTO’s policy.
According to the Lanham Act of 1946, federal registration is necessary to establish ownership rights. Please respond promptly to protect your rights and avoid potential legal issues.
We look forward to hearing from you soon.
Trademark scams invariably present telltale signs, one of them being flat-out lies about the law. Federal registration is NOT necessary to establish trademark ownership rights in the United States. In our case, Juan has been using the “Mofongo & Sushi” trademark since the second Obama administration, meaning he has established what are known as common law trademark rights merely by using the trademark in commerce — regardless of whether he has registered the trademark at the federal or state level.
Though you should never engage with anyone that appears to be trying to pull off a trademark scam, in some cases they might be doing you a favor, by prompting a conversation — with an actual trademark practitioner — about the trademark protections you have in place and whether they are sufficient. Moreover, as mentioned earlier, not all unsolicited communications regarding your trademarks are fraudulent. In some cases, you might be offered “services of dubious value, such as offering to record trademarks in a private registry,” but in some cases a provider might be offering assistance to deal with a real issue that has come up with your trademark application or registration.
To sum up, if you receive any unsolicited correspondence regarding trademark matters, reach out to a legitimate trademark attorney. At a minimum, this will ensure that you are not ensnared by trademark scams. And at the same time, your trademark attorney can alert you of any issues with your trademarks that merit action.
Fred leads Harris Sliwoski’s intellectual property practice and is the coordinator of the firm’s international team. Much of Fred’s practice consists of helping cannabis businesses protect their brands. He also works with entrepreneurs and companies entering the Web3 space, a new frontier for IP law. Prior to joining Harris Sliwoski, Fred worked overseas for more than a decade, in both government and private sector roles. Fred is a regular contributor to the award-winning China Law Blog and Canna Law Blog. Fred began his career overseas as a U.S. consular officer in Guangzhou, China, where he advocated for fairer treatment of American companies and citizens in China and for stronger intellectual property rights enforcement. After entering the private sector, Fred worked at a Shanghai law firm as a foreign legal advisor and later joined one of the oldest American law firms in China, helping foreign companies navigate the Chinese legal environment. He also led the legal team at a Hong Kong-based brand protection consultancy, spending most of his time out in the field, protecting clients against counterfeiters and fraudsters in Greater China, Southeast Asia and Latin America. In addition to his IP work, as a native Spanish speaker, Fred works closely with different Harris Sliwoski teams on Latin America and Spain matters. Fred also provides advice to cannabis industry participants and other businesses on import and export transactions. Fred is an ardent supporter of FC Barcelona—and would be even in the absence of Catalan forebears who immigrated to Puerto Rico in the mid-1800s.
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