As the Trademark Offices have adapted easy online systems and abandoned regular mail and fax transmission, in other words, eliminated human contact from their register maintenance, a new type of fraud has popped up.
Unknown parties change the contact details of U.S. trademark registrations for authorized USPTO communication, remove the email address of the appointed representative and exchange it with a fraudulent anonymous email address, typically with the trademark in the mail address to make it look credible. The phone number of the appointed representative is sometimes changed with one digit, so as to make it difficult to contact the representative and delay detection. The fraudulent email address will be registered as the PTO contact email address for the trademark registration in question. E-commerce platforms such as Amazon will check the contact details of the PTO (mainly the USPTO) for verification on the identity of the trademark holder, after an application is made to the Amazon Brand Register for authentication in order to put goods on the Amazon site. The fraudulent email address will be approved for using the trademark on Amazon. This way, the fraudulent entity (the troll) is able to put counterfeit products on the market at Amazon, in addition effectively preventing the rightful trademark holder from placing their trademarked goods on the platform and infringe the trademark rights of the right-holder.
The trolls use secure or encrypted e-mail services. A loophole has involuntarily been created by the automatic online registration system, since once a trademark is registered at the USPTO, the power of attorney for the representative expires and is no longer valid. A third party can easily tamper with the attorney/correspondence address without submitting a new Power of Attorney.
The subcommittee “Issues identification – Trademark Trolls” of the INTA Emerging Issues Committee, of which Åsa Righard of Gulliksson is a member, is looking into the problem and will propose how INTA might address it. One way might be to cooperate with the targeted Offices, to assist them with facilitating secure and at the same time user-friendly systems for safe online docketing and registration.
