Trademarks are valuable intellectual property assets that can protect your brand and are are vital to the success of your business.
To guard against infringing goods being imported into the country, as a trademark owner, you can partner with U.S. Customs and Border Protection to receive border enforcement of your registered trademarks through the agency’s e-Recordation program. In order to record with CBP in this manner, you must have a valid trademark registration published on the Principal Register of the U.S. Patent and Trademark Office.
Unfortunately, according to a standing USPTO alert, there are many unscrupulous firms contacting trademark applicants and registrants “attempting to get them to pay fees and for services that are not needed or required, or to pay inflated fees, or to provide services which they, as non-attorneys, are not authorized to provide.” USPTO reports that fraud of this nature has increased dramatically with the rise in applications amid the COVID-19 pandemic.
Advertising online, many of these firms pledge to “register” a trademark in “as little as 7 minutes” and “for only $99” — a misleading offer that, unsurprisingly, has attracted large numbers of individuals and small business owners. The reality turns out quite differently, however, as described by World Trademark Review in a February 2021 article about mounting concerns at the time over the low-cost filing agency Trademark Terminal — one of several dozen fraudulent agencies owned by the Pakistan-based company Abtach Ltd., which was hit earlier this month with a show-cause order.
The consequence of dealing with fraudulent filers was highlighted by USPTO’s recent crackdown (here and here) on improper trademark submissions that resulted in tens of thousands of trademarks being either terminated or indefinitely suspended.
In guidance provided to victims of fraudulent trademark registration firms, USPTO suggests first checking the status of your application in the Trademark Status and Document Retrieval (TSDR) system to determine whether it has been impacted. Note that if the application is suspended for an administrative investigation, you will not be able to make any changes to it.
Sanctions orders issued by the USPTO have the effect of terminating pending applications affected by the order. Unless it can be clearly demonstrated that USPTO made an obvious mistake in doing so, applications terminated in this manner cannot be revived. Therefore, you should file a new application to seek registration of the mark that was the subject of a terminated application without involving the party that was sanctioned.
If you have been the victim of a scam, there additional things you can do, which include contacting your state’s attorney general, filing a consumer complaint, or contacting the Federal Trade Commission. Also contact your financial institutions, such as your bank or credit card company, to determine if you can dispute the charges.