Recently, individuals have reported receiving scam emails from purported trademark attorneys warning them about potential conflicts over their business names or domain names. One such email claims to be from a firm called “Mark my Rights” and alleges that a client in North Carolina is attempting to trademark a name identical to the recipient’s business name.
Here is an example of such an email that was sent to one my clients recently from this attorney:
Donald R Joseph
Intellectual Property Attorney
Phone : + 1 (415) 449-4833
Address: 135 Porto Marino, Bel Tiburon, CA 94920-1316
Website: www. Markmyright . com
I took a look the California Bar Association’s website and there does appear to be an attorney with that name registered. I am not sure if the CA Bar Association, though, condones this type of scammy advertising, though. At least personally I don’t think it ethical. Here’s the email:
From: [email protected]
Date: January 10, 2025 at 3:54:29?PM CST
To: (( Redacted ))
Subject: Trademark Conflict, immediate action required
Dear (( Redacted ))
I hope you’re doing well. I’m reaching out on behalf of the Legal Department Mark my Rights, a private firm specializing in trademark and copyright legal services. We’ve recently received a request from an applicant in North Carolina who wants to trademark a name that is identical to “(( Redacted ))” which you are currently using for similar services. Our preliminary investigation indicates that you have been using this business name for quite some time. In accordance with our company policy, we prioritize the rights of established businesses over those of newcomers.
According to the USPTO records, the name “(( Redacted ))” is not currently trademarked and does not appear in the United States Patent & Trademark Office database. Legally, if a name isn’t trademarked, it is available for registration by anyone in the U.S., regardless of how long it has been in use. The key factor is the existence of a valid trademark; if another party registers the trademark before you, they will have a legal edge, even if you’ve been using the name longer.
Federal trademark registration grants the holder ownership rights and may limit your ability to use the name “(( Redacted ))” They could also take legal action against you, which might lead to claims on any profits you’ve made under that name.
Please let me know if you intend to use this name legally in the future, so I can assist you with the necessary steps. It’s important to remember that, as outlined in the Lanham Act of 1946 (§§ 1051 et seq), federal registration is crucial for establishing ownership rights.
Your prompt attention to this matter is vital for protecting your rights and avoiding any potential legal complications. We look forward to your response.
Best regards,
Donald R Joseph
This email is a scam and should be ignored. The biggest ‘giveaway” that this is a scam is that the name of the company they’re sending it to actually is merely pulling the title tag of the website’s home page of the company and using that as the name of the company. So, let’s say this email was sent to “Hartzer Consulting”. Well, the email actually is using the “company name” as “Hartzer Consulting – SEO and Domain Name Consultants”, which is the merely the title tag of the website’s home page, rather than “Hartzer Consulting”. So the emails being sent are just automated, and not even written in a way where they’re actually using the name of the company they’re targeting. More details:
Understanding the Scam
The email begins with a formal introduction, mentioning a supposed trademark application from an applicant in North Carolina. The attorney, allegedly representing a firm based in California, warns the recipient that their business name, ” (( redacted )) ,” is at risk of being registered by this North Carolina applicant. The email attempts to create urgency, suggesting that the recipient’s use of the name could be challenged if the applicant secures the trademark first.
Why This is a Scam
- No Real Client or Applicant: The claim that a client in North Carolina is attempting to register a trademark identical to a business name in Texas is highly suspicious. Trademark applications are usually filed by entities with a legitimate interest or connection to the name. It’s unlikely that an applicant from a different state would randomly choose to register a name tied to a specific region and service.
- Attorney’s Location: The email states that the attorney is based in California while dealing with a client from North Carolina. This is unusual as trademark attorneys typically operate within or near their clients’ jurisdictions to facilitate smoother legal processes. The geographic inconsistency suggests the email is not from a legitimate legal firm.
- Preying on Fear and Urgency: The email uses complex legal terms and references to established laws like the Lanham Act to intimidate the recipient. This tactic is common in scams to pressure victims into quick action without proper verification. Genuine legal advice would not create unnecessary panic but provide clear, constructive steps.
- USPTO Records: The email’s claim that anyone can register a name if it’s not trademarked oversimplifies the legal protections available. Established businesses have common law rights through prior use, even without federal registration. The email’s oversimplification is misleading, aiming to convince the recipient that immediate action is required.
What to Do If You Receive Such an Email
- Do Not Respond: Engaging with the scammer could expose you to further fraudulent schemes.
- Verify Independently: Check the USPTO’s official database or consult with a legitimate trademark attorney if you have concerns about your business name.
- Report the Scam: Report the scam to the Federal Trade Commission (FTC).
Scam emails like these are designed to exploit business owners’ fears of losing their brand identity. Remember that legitimate legal notices will come through official channels and are unlikely to demand immediate action via email. Always verify claims through trusted sources before proceeding.
