[E-trademarks] New twist on the latest TM scam--reaching out to owners of lapsed applications/registrations

Erik Pelton erik at erikpelton.com
Mon Feb 12 18:30:03 EST 2024 

The phone numbers are easy to find because clients put their phone number in when they signed the application (I just looked it up myself, and found Susan’s client’s phone number in the TSDR page for the new application).

A few thoughts on this phone number scam situation:


  *   The scammers who are preying on trademark applicants know that this is where they can find phone numbers. They can easily (manually or with software) pull hundreds of phone numbers each day.
  *   The phone number field is not required and we instruct all clients to leave it blank or use our law firm’s number. Of course, some do not read the instructions and submit it anyways.
  *   We send clients copies of new applications – including a warning about the various scams – as soon as possible after filing, since the scammers may begin calling/writing within 1 day.
  *   Pro bono clients do not have anyone warning them about this, or any reason to be wary of putting their phone number in the application.  The text on the USPTO forms and website is insufficient – it is there, but it is among hundreds of lines of text and notices in the application forms.
  *   The USPTO should immediately do away with this field in the signature block, at a minimum.
  *   The USPTO could give applicants easy way to scrub phone numbers that are in the public records.

Erik Pelton


Erik M Pelton
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Crane, Susan via E-trademarks
Sent: Monday, February 12, 2024 4:29 PM
To: Carl Oppedahl <carl at oppedahl.com>; For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Crane, Susan <susan.crane at wyndham.com>
Subject: Re: [E-trademarks] New twist on the latest TM scam--reaching out to owners of lapsed applications/registrations

Carl, the client is a non-profit that operates both a website and two coffee shops, so yes, a scammer could easily look up a phone number.  I think someone else recently reported on this scam as well.  But scary.

Susan L. Crane
Group Vice President, Legal
Intellectual Property, Brands & Marketing

Wyndham Hotels & Resorts, Inc.
22 Sylvan Way
Parsippany, NJ 07054
O (973) 753-6455
M (973) 879-3420
Susan.Crane at wyndham.com<mailto:Susan.Crane at wyndham.com>



From: Carl Oppedahl <carl at oppedahl.com<mailto:carl at oppedahl.com>>
Sent: Monday, February 12, 2024 4:18 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Subject: Re: [E-trademarks] New twist on the latest TM scam--reaching out to owners of lapsed applications/registrations


Let's see if I follow you on this.  The scammer went to the trouble of looking up the phone number of the client (how does one even look up phone numbers these days?) and used that phone number to contact the client?

I suppose the client might have some online presence such as a web site, with a phone number in it.

But wow.  The scammer would go to this extra trouble?

Until now what I have been communicating to clients, when we file a trademark application, is that they will be getting scam letters in the mail.  And I go out of my way to avoid including a client phone number in anything that I file, just as you do.

But now I guess what I have to do is add another sentence to the warning, namely to watch out for scam phone calls as well.

Dang it.

Thank you for posting.
On 2/12/2024 3:29 PM, Crane, Susan via E-trademarks wrote:
I had a pro bono client for whom I filed two applications on Friday (with no phone number listed for the applicant) receive a phone call today from the “Application Assistance Unit” telling her she needed to pay $500 to complete the applications.  Thankfully she was suspicious and reached out to me.

Sue

Susan L. Crane
Group Vice President, Legal
Intellectual Property, Brands & Marketing

Wyndham Hotels & Resorts, Inc.
22 Sylvan Way
Parsippany, NJ 07054
O (973) 753-6455
M (973) 879-3420
Susan.Crane at wyndham.com<mailto:Susan.Crane at wyndham.com>



From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com><mailto:e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Kevin Grierson via E-trademarks
Sent: Monday, February 12, 2024 3:24 PM
To: for trademark practitioners <e-trademarks at oppedahl-lists.com><mailto:e-trademarks at oppedahl-lists.com>
Cc: Kevin Grierson <kgrierson at cm.law><mailto:kgrierson at cm.law>
Subject: [E-trademarks] New twist on the latest TM scam--reaching out to owners of lapsed applications/registrations

In this case, they are contacting folks who HAVE filed for trademark applications and claiming a conflicting application is coming through (in this case, it was a registration that a client intentionally allowed to lapse): Kevin GriersonPartner​​​​
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In this case, they are contacting folks who HAVE filed for trademark applications and claiming a conflicting application is coming through (in this case, it was a registration that a client intentionally allowed to lapse):

Kevin Grierson<https://urldefense.com/v3/__https:/www.culhanemeadows.com/attorney/kevin-grierson/__;!!Nf401RNTQFE14GfWW3o!hbaSz0aptGDP93nDUrZJq_3OoNqJCJP--cfAKb8ltJyU1k1yMEzELGNybNMgCw3n4mGlbRhTCEM6izuY3l3jo5nHPPDfMwM$>
Partner​​​​
[CULHANE MEADOWS PLLC]
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From: <michael.harrison at usptotrademarked.com<mailto:michael.harrison at usptotrademarked.com>>
Date: Mon, Feb 12, 2024 at 2:13 PM
Subject: RE: Trademark Conflict - Action Required!
To:

Dear XXXXXXX
 I hope this email finds you well. We are writing to address a time-sensitive matter related to your trademark application named “XXXXXX”. Upon reviewing your application, it has come to our attention that while you initiated the trademark application process, you did not proceed with the government classifications, resulting in an incomplete filing. Unfortunately, due to this incomplete filing, the United States Patent and Trademark Office (USPTO) has received another application for the same trademark and name.
 The USPTO has notified us that there is a potential conflict between your application and the new application. To resolve this matter, we need your immediate clarification on your intent to proceed with the registration of the trademark under the same name and mark. If you still intend to proceed with the trademark registration, we require your confirmation within the next 24 hours. Failure to confirm your intention to register will result in the USPTO transferring the rights to the trademark name and mark to the new applicant. Please understand that time is of the essence, and we strongly recommend that you respond promptly to this email. If you have any questions or need further assistance, please do not hesitate to contact us immediately at 442-305-4348.
 We understand the significance of your trademark and are committed to helping you navigate this situation. Your swift action will ensure the protection of your rights and interests.
 Thank you for your immediate attention to this matter.
 Regards,
Michael Harrison
Paralegal officer
PH : 442-305-4348


Kevin Grierson<https://urldefense.com/v3/__https:/www.culhanemeadows.com/attorney/kevin-grierson/__;!!Nf401RNTQFE14GfWW3o!hbaSz0aptGDP93nDUrZJq_3OoNqJCJP--cfAKb8ltJyU1k1yMEzELGNybNMgCw3n4mGlbRhTCEM6izuY3l3jo5nHPPDfMwM$>
Partner​​​​
[CULHANE MEADOWS PLLC]
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[Fax:]
 866-521-5663<fax:866-521-5663>
[Email:]
 kgrierson at cm.law<mailto:kgrierson at cm.law>

Atlanta | Austin | Boston | Chicago | Dallas | Delaware | Houston | New Jersey | New York | Philadelphia | Washington, DC<https://urldefense.com/v3/__https:/www.culhanemeadows.com/offices/__;!!Nf401RNTQFE14GfWW3o!hbaSz0aptGDP93nDUrZJq_3OoNqJCJP--cfAKb8ltJyU1k1yMEzELGNybNMgCw3n4mGlbRhTCEM6izuY3l3jo5nH7Tv-soY$>
This message is for the personal and confidential use of the intended recipient(s) and may be subject to attorney-client privilege. If you have received this communication in error, please notify the sender immediately. Please note that general marketing updates/legal news alerts provided by Culhane Meadows or its attorneys are for informational purposes only and should not be relied on as legal advice for any specific situation. Laws can change rapidly and, therefore, you should always consult with your CM attorney to ensure you have the most accurate and current counsel pertaining to your situation. ​

This email message (including all attachments) is for the sole use of the intended recipient(s) and may contain confidential information. If you are not the intended recipient, please contact the sender by reply email and destroy all copies of the original message. Unless otherwise indicated in the body of this email, nothing in this communication is intended to operate as an electronic signature and this transmission cannot be used to form, document, or authenticate a contract. Wyndham Hotels and Resorts and/or its affiliates may monitor all incoming and outgoing email communications in the United States, including the content of emails and attachments, for security, legal compliance, training, quality assurance and other purposes.
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