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Trademark Attorneys Blast New Email Requirement as Scam-Bait

Feb. 14, 2020, 11:31 AM

A new rule requiring trademark owners and seekers to list their own regularly-checked email addresses on publicly-available applications violates privacy, invites phishing scams, and provides no discernible benefits, attorneys say.

The Patent and Trademark Office has said the email mandate, which starts Saturday as part of a broader plan requiring online filing, gives the agency more contact information. Applicants’ email addresses won’t appear on the main status page of any trademark, nor in documents when an owner isn’t represented by counsel, the office says.

But trademark attorneys, who characterize the requirement as “puzzling” and “ridiculous,” say it unjustifiably amplifies clients’ risk from already-prevalent email scammers. They envision bots scraping documents to compile valuable lists of working email addresses, allowing scammers to pose as trademark officials seeking personal information or phony fees.

“I don’t think they’ve thought through the implications for the clients, and potential for misuse,” trademark attorney Joel Samuels of Harness, Dickey & Pierce PLC said, referring to PTO officials. “Having a client email, that’s just going to increase the potential for harassment, misinformation campaigns, all this phishing stuff.”

Attorneys are also concerned about the agency’s newly ramped-up enforcement of an existing rule barring trademark applicants from listing post office boxes or law firms as their physical addresses.

Making individual applicants, including celebrities or small businesses working out of a private home, list their personal addresses poses additional privacy risks, Joel Feldman, a trademark attorney at Greenberg Traurig LLP, said. Such applicants could form an LLC to avoid making their home address public, but the LLC would still have to have a functional business address, he said.

“The care-of addresses and P.O. boxes have been fine forever, and now they’re not,” Feldman said.

Feldman attributed that shift to the agency’s push for tighter vetting of foreign trademark applicants, targeting U.S. addresses for foreign applicants fraudulently claiming to be in the U.S. But applying the stricter address rules to applications filed by U.S. attorneys, which would make even foreign applicants compliant with a separate rule, doesn’t make sense, he said.

The PTO twice delayed activating the rule requiring applicant email addresses to give the agency and practitioners more time to prepare. The agency didn’t respond to requests for comment.

‘Headache for Everyone’

Under the new rule, individual trademark applicants must give the agency an email address that they check regularly. Companies also must include email addresses that don’t belong to an attorney.

Current owners will have to include a regularly-checked, non-attorney email address in their next filing, practitioners said, though PTO requirements to maintain up-to-date information may suggest they should add one sooner. What happens to pending applications isn’t clear, attorneys said.

The agency said the change allows officials to reach trademark owners if they change counsel.

“From a basic standpoint I get it. Representation changes happen, and you want to make sure someone’s answerable,” Samuels said. But he said he hasn’t seen any rationale or impetus for the change, such as numbers of applications being abandoned due to lack of response.

Attorneys also don’t know whether or how the agency will test an email’s validity or, if it does, how quickly an applicant will have to respond.

Emails will still go to the counsel of record first, if there is one, and then to the trademark owner or applicant if there’s no response. That creates a particularly valuable database for email scammers and spammers because the addresses will be regularly checked by people expecting official correspondence, trademark attorney Lindy Herman of Rutan & Tucker said.

“You’re just priming them for spamming. We’re going to be advising clients to set up junk email accounts. True communications from the trademark office will come to us,” Herman said. “It’s going to be a headache for everyone.”

Trademark applicants can ask the PTO to redact certain information from documents, but only after the agency receives an application, grants it a serial number, and posts it online, attorneys say. A decision on a petition can take weeks or months—plenty of time to discover and mine applications, they say.

Practitioners also say also don’t know how the agency will determine what circumstances satisfy the “extraordinary situation” standard for redacting email addresses in documents.

Go Phish

Publicly available email addresses open the door to phishing, in which a bad actor sends official-appearing email seeking payment, information, or a click on a compromising link. It’s the electronic version of clients being scammed regularly by physical mail dressed up to mimic official PTO notifications, attorneys said.

Those who don’t wish to comply with the email address rule risk having the PTO deny an applicant a filing date—which puts the application in line for examination and helps to establish priority over similar marks.

“Losing a filing date is a pretty harsh penalty, considering that with almost anything other than not paying a fee you get an office action,” Feldman said.

The PTO could have focused its efforts on other pressing issues, such as upgrading an inefficient system that labels an “overwhelming number” of lapsed marks as active, or helping examiners better spot fraudulent samples of trademark use, trademark attorney Dyan Finguerra-DuCharme of Pryor Cashman said.

“It’s puzzling to me. I don’t understand why they thought this was necessary,” she said. “It’s just something for nefarious actors to skirt around, and that will cause headaches for trademark owners.”

To contact the reporter on this story: Kyle Jahner in Washington at kjahner@bloomberglaw.com

To contact the editors responsible for this story: Rebecca Baker at rbaker@bloomberglaw.com; Keith Perine at kperine@bloomberglaw.com

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