Fraudulent Trademark Solicitations Raise Ethical Concerns For TM Attys

Michael E. McCabe, Jr.Attorney Fraud, Client Funds, Competence, Trademark Ethics0 Comments

The USPTO today issued a warning about the dangers of fraudulent trademark solicitations.  In a blog posted on the USPTO’s website (link here), Commissioner for Trademarks Mary Boney Denison warned:

Trademark solicitations have been a global problem for decades, including for USPTO customers, and we have implemented several measures to protect our customers against them.

As many trademark practitioners are well aware, private companies not associated with the USPTO often use trademark application and registration information from the USPTO’s database to mail or e-mail trademark-related solicitations.  See Non-USPTO Solicitations, Solicitation Alert.  The USPTO notes that often these private companies use names that resemble the USPTO name and appear to be from the Agency, including entitles doing business as “Patent & Trademark Bureau,” “Patent & Trademark Office,” “Trademark and Patent Office” and “Trademark Office Ltd,” to name a few.

Notably, most of these private entities require “fees” to be paid for whatever putative service is being offered.  Applicants or registrants may pay fees to these companies mistakenly believing they were paying fees required by the USPTO.

mailboxIP counsel must be vigilant to ensure that they do not get caught up in paying a purported trademark fees to one of these fraudulent companies.  This is not just common sense–it is an ethical requirement.

Indeed, attorneys have a duty of competence that requires them to exercise due care in handling their client matters. See 37 C.F.R. Section 11.101. Payment of a purported USPTO fee to a fraudulent entity could cause unsuspecting counsel to miss real USPTO deadlines, jeopardizing their unsuspecting clients’ trademark rights. Moreover, billing clients for such “services” could violate the USPTO’s rules proscribing an attorney from charging an unreasonable fee (37 C.F.R. Section 11.105) as well as the practitioner’s duty to safeguard client property.  See 37 C.F.R. Section 11.115.

Commissioner Denison’s blog notes that the Office includes a warning and link to its Non-USPTO Solicitations page in every office action as well as to every registrant when the certificate of registration is issued.

Attorneys who delegate bill payment to clerical employees also owe an ethical duty to supervise and train their staff, pursuant to 37 C.F.R. Section 11.503.  This duty arguably includes alerting those non-attorneys about the existence of these trademark scams so they can recognize when a trademark-related communication is legitimate or fraudulent and take appropriate action–such as alerting the practitioner and not paying the fake entity’s invoice.

Training non-attorney staff about fraudulent USPTO correspondence, such as the trademark scam letters, may avoid professional embarrassment.  Such training may also keep a trademark practitioner from inadvertently violating one or more USPTO ethics rules.

 

 

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