Hi everyone! This is a guest blog post from Sonia Lakhany (@trademarklawyerlady)! The above video about some recent fraud on the USPTO trademark system. I first shared this my Trademark Attorneys/Lawyers group on Facebook (if you’re not a member, you join for free).
This is about a recent issue that is starting to affect many of our clients’ trademark registrations, so I thought I would supplement it with a post explaining what is going on. As you can see below, every USPTO trademark application that is filed has a Correspondence section that lists the name, mailing address, email address, and other contact information for the person who will be the official correspondent for the application.
Usually, this person is the Attorney of Record (us), as also shown in the TSDR record below.
However, lately third parties are making unauthorized changes to the correspondent e-mail address using this form and listing alternative email addresses instead. They are doing this because they are trying to obtain ownership of the trademark, which is required to be listed on the Amazon Brand Registry. Amazon’s verification process requires confirmation via email, so the fraudulent third parties list themselves as the Correspondent so that they will receive the emails instead.
The most important thing you can do to stay on top of any such changes is to ensure you have proper docketing software, preferably one that sends you regular alerts to changes in your marks. If you find that one of your client’s trademarks has been compromised in this manner, take the following steps:
Email email@example.com immediately to notify them of the unauthorized change to the correspondence information. Be sure to include the registration number.
Wait 24 hours to see that the unauthorized email is updated in TSDR. I suggest having your docketing system provide you some sort of alert of this change so you don’t have to manually track it.
File the Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form (shown below) to change the correspondence email back to the correct one.
The key here is to wait for the fraudulent change to take place before you change it - otherwise your change may take effect before the fraudulent one, which will result in the fraudulent email being finalized on TSDR instead.