Trademark Owners Beware

The Amazon Brand Registry (ABR) provides sellers with additional services to protect their brand and intellectual property, namely the ability to take down infringing or counterfeit listings involving their brand.  To be part of this program, sellers must provide a brand name that has an active federal trademark registration in the U.S. Patent and Trademark Office (USPTO) listing the goods being sold on Amazon.

Unfortunately, trademark scammers have taken this new service as an opportunity to gain advantages in the marketplace. These scammers are fraudulently changing email correspondence with the United USPTO for a trademark they do not own and then contact the ABR to register the trademark with Amazon to the scammer’s email address.

How does it Work?

The scam is most often initiated on Fridays, where the attacker is hoping that the trademark owner won’t notice the problem until the following Monday. The hijacker uses the email address on file at the USPTO for the registration of that mark because Amazon uses this same email to verify the ownership of the federal trademark registration upon initial enrollment by the Amazon seller in the ABR. They will monitor the Trademark Status and Document Retrieval (TSDR) to see exactly when the email address change takes effect at the USPTO. At that moment, a registration request is sent to ABR, asking that the registered trademark ownership is changed to their information.

This true trademark owner can e-file a correction to the USPTO in the Trademark Electronic Application System (TEAS) however, at that point, it’s too late. Amazon will have already emailed the secret code number to the culprit, who then uses that code to grab the ABR registration at Amazon.

I’m a Victim, Now what?

Either your in-house attorney or outside representative will need to contact ABR to ask that the registration at Amazon be revoked. The following steps need to be followed to start the recovery of your registration:

1. Send an email to teas@uspto.gov with the following info:

  • Name and Phone Number
  • Application/Registration Number
  • Type of Form Filed
  • Date of Filing

 

2. To reverse the change, don’t file a TEAS Change of Correspondence Address form. They’re throttling those to deal with the problem. Instead, use the TEAS Revocation/Appointment form and it should go right through.

3. If you get a notice about an Amazon Brand Registry request for that same mark, report it to the USPTO using the same teas@uspto.gov

Who is Doing This?

There are some indications that the attacks are being initiated in South Korea and Singapore, although their use of Virtual Networks makes it very hard to trace. These bad actors seem to be attacking in waves, usually with some type of pattern. Some examples are Marks that had the letter “U” in them and Madrid registrations in sequential order. The USPTO is currently collecting Information to help curtail any future theft.

If you discover you are are a victim of this fraudulent practice, and would like help to resolve this issue,  please contact DBL and we can start the fight to regain your trademarks. As always, if you are a current DBL client, you can rest assured we will keep on top of all change of correspondence notices and take the appropriate actions to secure your IP.

 

Posted in: Intellectual Property - Patents, Intellectual Property - Trademarks