09 Sep USPTO: An Unexpected Need for Risk Management… by John M. DeBoer
In the new era of artificial intelligence (AI), accompanied by those willing to use AI for malicious or harmful purpose, such as deepfakes or misinformation, it is wise to cast a skeptical eye on pretty much anything that an individual or business owner might come across. Solicitations, malware or ransomware, phishing, spoofing, scams, dark web, etc., are all part of an ever-growing list of dangers a person might encounter on a daily basis.
Best practice in any context is to incorporate some form of risk management. For example, many accounting departments require verifying identification prior to providing updated banking information. This prevents spoofed emails that send new banking information to an invoice recipient in the hopes of making a quick, lucrative heist.
A point of business that might not at first seem like an obvious source of fraud or scam is in the area of intellectual property, or more specifically, the U.S. Patent & Trademark Office (USPTO).
USPTO and Public Information
To be sure, I am not saying danger lies with the USPTO itself, but instead referring to the fact that the USPTO is a repository of information, a fair amount of which is made publicly available. For example, when a patent application is filed, some kind of applicant contact information is listed (and usually eventually publishes) in a filing form that includes name, address, email, and phone number. The same is true for when a trademark registration application is filed.
A savvy person can find ways to mask or hide this information to at least certain degree. But to the unsuspecting or unaccustomed filer, it only makes sense to simply ‘fill in the blank’ with whatever information is asked. Unfortunately, this information is routinely (daily) data mined by companies that look to take advantage of an uninformed recipient. The act is so prevalent that USPTO now provides an updated listing, among other warnings, of those known to be involved in the practice:[1]
https://www.uspto.gov/trademarks/protect/examples-fraudulent-misleading-solicitations
https://www.uspto.gov/trademarks/protect/filing-firms
https://www.uspto.gov/trademarks/protect/caution-misleading-notices
There are a few common methods utilized by scrupulous parties, which includes (constant) harassment by robocalls, email, and by the main point of this article, direct letter mailing. When I speak with a letter recipient (oftentimes a client), I try to clarify that these correspondences may not be a ‘scam’ per se – that there is usually some kind of service provided.
The problem is more so the extremely misleading nature of the solicitation that makes it look official, or look like something that requires urgent action (usually by providing credit card information). Once the unsuspecting provides a credit card number, or worse, a binding signature, all bets are off. As these agencies are not law firms, they are not bound to the same ethical and legal obligations that a lawyer provides to a client. Exorbitant service or subscription charges, hidden fees, etc. may be right around the corner.
Risk Management
These simple suggestions could apply to just about anything, but are applicable to patent and trademark notifications:
1 – Be diligent and READ!
These letter notices provide all kinds of warnings and disclaimers, which is why they usually are not a scam… they are literally telling you (in tiny font) what their intentions are. I get it – nobody likes to waste time reading the small print. But if someone is asking for money, take a few moments and put some attention to it. Be careful, be skeptical.
2 – Ask someone else.
If your curiosity perks and spider sense stars tingling, there is probably a reason – before becoming a victim, get someone else’s viewpoint. Usually a coworker, colleague, family member, etc. can put quick eyes onto whatever you are looking at. If your gut is telling you to tread cautiously, trust it.
3 – Use a lawyer.
If you have a one-off IP asset (one trademark or one patent), you do not really have all that much risk and can probably make do with good common sense. But, once you have multiple IP assets or an ongoing portfolio, use a lawyer. A good lawyer is the shield to protect you from bad actors. I tell every one of my clients the same thing: if it does not come directly from me, it is not legitimate – toss it. Ideally all the calls, emails, letters come my way so that you can focus on your more important daily business items.
At KMD, our goal is to help you understand all aspects of IP as they apply to your business. As intellectual property strategies vary greatly between industries or even businesses, we aim to help you navigate through choices that might arise as they pertain to a range from simple to complex, such as tending to IP asset maintenance, renewals, or the like.
By John M. DeBoer, Senior Attorney at KMD Law
[1] Although ‘trademarks’ is in the URL, the same caution and care is just as applicable to pending patent applications and issued patents (as well as patent maintenance).