[E-trademarks] TM Scam? Responded to a Scam Letter

Tue Dec 3 19:06:23 UTC 2024

Another thought that happened to one of our clients. Received payment  to renew a client's registration and found it was filed by another attorney.  Client did not know attorney and contacted the attorney.  The attorney sent back a photo of a check payable to "Patent and Trademark Office" dated two years ago.  It appears that the accountant replied to one of the scam letters sent out two years before.  The attorney who filed the renewal used client's web site for specimen but only did a Section 8.  Perhaps that is what happened to this client.
 Many years ago I had a client that sent payment in response to a scam letter but that registration never got renewed so the client wound up paying twice for a renewal.  Annette
Annette P. Heller
Trademark/Copyright Attorney
TM Law & Associates
400 Chesterfield Center Ste 400
Chesterfield [St Louis] MO 63017

www.TrademarkAtty.com

314-469-2610 Fax 314-469-4850In a message dated 12/3/2024 12:57:10 PM Central Standard Time, e-trademarks at oppedahl-lists.com writes: 

Even if the specimen is legitimate, I don’t think it’s a valid filing if the party filing it isn’t the registrant or an authorized attorney, though a legitimate specimen might indicate that the filer at least believed he or she was authorized. 

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Kevin Grierson
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  kgrierson at cm.law
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Please note: Culhane Meadows is now CM Law
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From: asarabia2 <asarabia2 at gmail.com> 
Sent: Tuesday, December 3, 2024 1:51 PM
To: Kevin Grierson <kgrierson at cm.law>; For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Subject: Re: [E-trademarks] TM Scam?

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Kevin has a good point, might be a fraudulent filing.

Was the specimen filed legit?

On 12/3/2024 10:38 AM, Kevin Grierson wrote:

Hard to see how this is in any way a gift to the client.  Unless the client is mistaken and someone with authority at the client authorized the filing, the filing was not made or signed by the client or an authorized representative of the client, but was signed by someone purporting to represent the client.  I don’t think that filing can be authorized after the fact.

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Kevin Grierson
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  kgrierson at cm.law
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Please note: Culhane Meadows is now CM Law
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of asarabia2 via E-trademarks
Sent: Tuesday, December 3, 2024 1:20 PM
To: e-trademarks at oppedahl-lists.com
Cc: asarabia2 <asarabia2 at gmail.com>
Subject: Re: [E-trademarks] TM Scam?

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I am not sure about the State Bar complaint until you know more and until after the holiday season.  One mystery is why some random attorney would  pay the renewal fee. That is a gift to your client. You might check for other trademarks at the Patent and Trademark Office for which the attorney represents the owner.

100% agree on the power of attorney filing. 

Regards,

Tony 

IP Business Law, Inc.
320 via Pasqual
Redondo Beach, CA 90277
(310)377-5171
www.calrestitution.com 

On 12/3/2024 10:02 AM, Eric Morton via E-trademarks wrote:

Is this attorney real?  I’d check the attorney’s bar number and look up the attorney with the state bar.  A complaint with that attorney’s state bar is in order. 

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Eric D. Morton

Attorney

Clear Sky Law Group, P.C.

1300 Clay St., Ste. 600, Oakland, CA 94612

P:  (510) 556-0367 / (760) 722-6582

F:  (510) 751-4598

emorton at clearskylaw.com

www.clearskylaw.com

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Tim Ackermann via E-trademarks
Sent: Tuesday, December 03, 2024 9:03 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Tim Ackermann <tim at ackermannlaw.com>
Subject: Re: [E-trademarks] TM Scam?

Mark, 

 I'd consider filing a power of attorney ASAP. This is probably not the case -- I don't want to assume attorney malfeasance -- but it's not impossible.

 What I'd be worried about is some kind of Amazon / brand-ownership hijacking. Assuming you didn't have a filed power of attorney, the USPTO stopped recognizing you as the attorney upon registration (or completion of earlier maintenance filing) under 37 C.F.R. §2.17(g). Then, once this new attorney files the renewal, the new attorney is recognized under 37 C.F.R. §2.17(b)(1), right? And that attorney will get any kind of emails from Amazon, or Walmart, or whoever now uses that method of verifying brand ownership, under 37 C.F.R. §2.18.

 I just don't see another point for paying the client's USPTO fees when you are not going to be reimbursed. And the "we're on vacation and not responding" might just be a dodge. 

 Sincerely, 

Tim Ackermann

The Ackermann Law Firm

E:  tim at ackermannlaw.com
P:  817.305.0690
F:  214.453.0810
W: ackermannlaw.com
O: 1701 W. Northwest Hwy. Ste. 100
     Grapevine TX 76051

On Tue, Dec 3, 2024 at 10:41 AM Mark Kaufman via E-trademarks <e-trademarks at oppedahl-lists.com> wrote:

Oh great and powerful Brain Trust:

We wrote to a client to renew a registration (due in a year, but inspired by the upcoming increase in PTO fees).  Client said they’d send payment.  Before we renewed, another U.S. attorney had filed and paid the fee for renewal.  Disappointed, I wrote to the client.  Client said that they didn’t know who the new attorney was, and that client had mailed me a check to do the work.   An email to the new attorney semi-bounces back with the following message:

XYZ Law Firm will be away on vacation for the 2024-2025 holiday season. Afterward [the firm] will begin the winding up process. If you have any questions this email will be monitored sparingly but questions will be addressed in time. [The Firm’s] Intellectual Property web services have been faulty since 9/4/2024. If assistance is needed concerning a prior response please call.

I’m not sure if the “2024-2025 holiday season” means the entire month of December.  A phone call to new attorney’s cell phone doesn’t answer, and “mailbox is full.”  I’ve sent a text message, but am not optimistic about getting a response.

So:  I guess I’ll send the foregoing to TMscam at uspto.gov and, if anyone thinks it’s advisable, to the Post Registration Department.  But the curious thing about this hijacking is that the new, unauthorized “law firm”, in the process of taking over the registration, paid the filing fee.  Maybe they intend to assign the registration to some other scammer…

I welcome your thoughts and suggestions.

Thanks,

Mark

Mark S. Kaufman

Kaufman & Kahn, LLP

Email:  kaufman at kaufmankahn.com 

www.kaufmankahn.com

10 Grand Central

155 East 44th Street, 19th Floor

New York, NY  10017

Mobile: +1 (917) 453-7807

Tel.:  (212) 293-5556, x 2

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