Trademark Attorney Impersonation Scams Thrive During Crackdown

When attorney Ana Vinueza checked her mail in mid-July, she saw four cease-and-desist letters from attorneys and businesses claiming her clients’ trademark applications infringed their rights.

But Vinueza isn’t a trademark attorney and has never filed a trademark application. Vinueza ran a search of the US Patent and Trademark Office’s trademark registry for her name as the attorney of record. What she found stunned her: she’d been listed on about 2,500 filings.

Vinueza alerted an IP attorney, who hadn’t heard of this scam before.

“That clued me in that this is not normal,” said Vinueza, a senior attorney at Illumina.

Her experience exemplifies a yearslong issue for the PTO as it fights scams and fraudulent applications from entities seeking to secure trademark protections. Scammers have pursued tactics like faking application materials, misusing attorney credentials, or using social engineering to hijack applicants’ accounts to file huge swaths of fraudulent applications.

These trademark scams are spiraling into a growing problem. The US Government Accountability Office found in March that more than a third of the 2.8 million trademark applications received by the PTO may be false or inaccurate. The GAO advised the office to more regularly assess fraud risk of the trademark register while improving its data systems for stronger risk management.

William J. Morris III, of counsel at Downs Rachlin Martin, said it’s currently been the worst he’s seen in 25 years of practicing trademark law. The PTO knows of about 30 attorneys whose credentials have been hijacked and used to make submissions through attorneys’ accounts, Commissioner for Trademarks David Gooder said in a statement to Bloomberg Law.

Rachael Dickson, senior trademark attorney at Lloyd & Mousilli, said Vinueza’s experience “appalled” her but is indicative of a larger trend.

“They’ve just been doing whack-a-mole—fixing things occasionally and it causes more problems,” Dickson said.

Attorneys are increasingly spreading the word about scams, something the PTO has encouraged as crucial to identifying and curbing them.

Dickson has posted on LinkedIn and X to educate attorneys on how to search their name on the trademark register. She hosted an October webinar alongside Vinueza regarding how to combat scams.

Morphing Scams

The PTO has issued myriad directives to fight fraud. In 2019 it released a US counsel rule requiring foreign-domiciled trademark applicants to have US-licensed attorneys. Earlier this year, the office required attorney support staff to verify their identities in trademark filing system accounts. The PTO also issued an email notice in September urging attorneys to track their credentials against misuse, and it announced plans for more audits to curb invalid trademark samples.

Scammers hijacking attorneys’ credentials is directly tied to the 2019 final rule, Morris said, because before the rule parties didn’t need US attorney credentials.

Trademark registrations remain desirable to applicants, Morris said, and people are motivated to access attorneys to secure protections.

Bad actors have posed as attorneys on the online freelance marketplaces Fiverr offering to file applications for low fees, the PTO said in a statement. They then inflate fees and solicit unnecessary services to prolong the application process.

The PTO said it established the 2019 rule to curb the “growing problem” of foreign parties filing applications with fake names, addresses, and samples. It acknowledged scammers seek to circumvent the rule with stolen credentials.

Scammers pivoted to another tactic, “renting” credentials from “inexperienced or unethical” US attorneys.

In January, the PTO started requiring all attorney support staff with accounts to verify their identity to access its trademark filing systems.

Still, scammers have circumvented the ID verification system using “socially-engineered accounts,” the PTO said. Scammers ask applicants to share their ID-verified PTO accounts’ passwords, and applicants may not know attorneys need to create accounts themselves.

While the system ensures account holders’ identities match their US IDs, safeguards remain insufficient to prevent scammers from inputting other attorneys’ credentials, Dickson said.

“It’s like putting a lock on the door and then forgetting to lock it,” she said.

PTO Response

The office plans more direct audits to curb the surge of invalid trademark samples, according to an Oct. 28 policy update. The PTO continues to urge attorneys to check the trademark register to track their credentials’ use.

“There are certain limitations on how this can be dealt with because there’s a statutory requirement for the trademark office to make application registration—all of that information—publicly available,” said Laila Wolfgram, of counsel at Polsinelli Law Firm.

The PTO can suspend accounts with stolen credentials and remove attorneys’ names from public trademark records.

Vinueza said she was “pleasantly surprised” the PTO only took three weeks to clear her name from applications filed under email addresses she told them were falsely connected to her and add notes flagging she wasn’t the attorney of record.

Still, Vinueza said she wants the office to be more proactive.

“I’m pleased at how quickly they were able to resolve the initial issue, but I’m frustrated that there’s no greater attention being paid to the root cause of the problem,” she said.

Future Protection

A remaining obstacle is the hyper-visibility of attorneys’ bar credentials, Wolfgram said.

“It’s easy to take this information and misuse it,” she said.

The PTO is developing better IT tools to gather evidence faster to suspend accounts and issue administrative orders to scammers, said PTO’s Gooder. These orders can propose sanctions like applications’ termination.

Still, the agency lacks authority to prosecute scammers because it isn’t a consumer protection authority, Gooder said.

The office has collaborated with bar associations, the Federal Trade Commission, and law enforcement to alert the legal community to scams, he said.

Vinueza said the “grassroots effort” Dickson is leading educates attorneys about scams’ warning signs.

CJFox Law principal attorney Caroline Fox recommended trademark attorneys spread the word beyond IP circles.

“The people that we need to be more worried about is people who aren’t in this circle that haven’t heard about it,” Fox said.