Trademark Scam Series #2: Attorney Credential Spoofing

Evolution of the Scam and USPTO's Response

This particular scam is the latest evolution in a series dating back to 2017, when a flood of trademark applications were filed at the USPTO with fraudulent specimens. Specimens, proof of the applicant’s use of a product or service in commerce, must be submitted before an application can proceed to registration. Bad actors would take an existing photograph of a product from online and digitally replace the existing trademark with the applied-for mark and submit that as a specimen. The USPTO feared that this practice could result in marks being registered that were not actually being used in commerce in the US, which could threaten the integrity of the US Trademark Register.

This led to a persistent game of Whac-a-Mole® between scammers and the USPTO, as the government implemented several security measures to try to defend against the fraudulent specimen issue, and then against other issues as they occurred. Nevertheless, new types of scams keep cropping up.

1. In August of 2019, the USPTO implemented the U.S. Counsel Rule, requiring any non-U.S. applicant to file via a U.S. attorney. The USPTO reasoned that since the fraudulent specimens were primarily coming from foreign applicants, this new requirement could potentially curb the issue.
2. Toward the end of 2019, the USPTO required a uspto.gov account to access trademark application forms. This provided more accountability as to who was actually filing the applications. While the fraudulent specimen issue reduced over time, the USPTO still found themselves dealing with hundreds or thousands of applications filed by trademark mills, companies full of non-attorneys who defrauded applicants into thinking they were being represented by competent counsel. These applications were often full of significant issues.
3. Eventually, attorneys had to start including their bar license numbers, state of registration, and year of licensure with trademark applications. This led to many bad actors reaching out to US attorneys via LinkedIn to ask if they could essentially “rent” their credentials in order to file massive numbers of applications.
4. In August of 2022, the USPTO began to require all uspto.gov users to verify their identity via id.me in order to file trademark forms. Support staff, such as legal assistants, paralegals, and law clerks, had to be sponsored by a verified attorney to access the filing system.In January of 2024, the id.me verification requirement was rolled out to cover support staff as well.

While these identity-verification methods may initially appear robust, the process of drafting an application itself leaves room for exploitation. When a filer reaches the “Attorney/Correspondence” section of an application, nothing actually prevents them from typing any name and bar number for the attorney. While examiners do check for attorney credentials during the application review process, this system is by no means infallible. The USPTO recently told ABA Journal that there have now been 30 documented cases of attorney names and credentials being listed on applications they did not file. One attorney, who has never practiced trademark law, had her name listed on over 2,300 applications!

These scammers impersonate U.S. attorneys in order to extract fees from unsuspecting clients and fraudulently file their trademark applications, but then disappear and allow the application to fall by the wayside. These scammers generally do not perform any sort of due diligence when filing the marks and the applications they file are often refused for some sort of deficiency or obvious conflicting mark. Applicants who expect to have an attorney who can handle such a refusal are then ghosted; these applications generally abandon due to failure to file a response. 

The victims here are two-fold: the clients who waste time and money investing in a doomed trademark application filed with fraudulent credentials, and the attorneys whose names are attached to these slapdash applications. 

Applicants seeking to avoid this situation should verify that their attorney is who they say they are. Make sure to check your attorney’s contact information online to ensure they are who they say they are. Be suspicious of unbelievably low filing fees for trademark applications; if it seems too good to be true, it often is. 

Attorneys should perform regular trademark searches for applications listing you as attorney by searching AT:(("FIRST NAME LAST NAME"~2) OR ("LAST NAME, FIRST NAME"~2)). If you see marks you don’t recognize, report the issue to [email protected].