How Trademark Attorneys Can “Name-Check” Themselves

Gokcen Uzer Cengelci / Lisa Wright,

Did you know that you may have been catfished? According to Oxford Languages the definition of the verb to catfish is “to lure (someone) into a relationship by means of a fictional online persona”. The act of catfishing is commonly associated with social media profiles, such as Facebook and Snapchat - meaning that anyone with an online presence, regardless of their profile or position, can be a victim.

In fact, the World Trademark Review recently highlighted the impact of catfishing in the legal sector, in a report concerning the surge in both trademark solicitations and the hacking of attorney personal information for unauthorized use by alleged online imposters. You can learn more in their June 16 online article entitled “USPTO urged to fix search capability after hijacking of attorney details” authored by Tim Lince.

Trademark applicants catfished

The recent Liberty Legal Firm debacle reported upon by the WTR saw this mysterious organization run a digital marketing campaign across the United States, in which the company sent unsolicited texts and emails to trademark applicants with an offer of a free consultation to address a cited (and often incorrectly dated) office action. The company mentioned the names of legitimate trademark representatives in their messaging (who are unconnected with Liberty Legal Firm) and also added some strikingly similar ‘real’ attorney profiles to their website, which appeared to have been copied from other firms’ sites and assigned different names!

Given the reach of this case, it would be safe to assume that these instances of fraud are not solely limited to the theft of representative information and must also be happening in countries outside of the US. In fact similar types of fraud instances have come to the attention of the WIPO and EUIPO in the past, in which it was reported that applicants & agents received invitations to pay fees that had not come from the official trademark office themselves. WIPO is also providing public samples of such invoices to help prevent any future misleading activity. 

Intellectual Property is a complex area of law that covers a wide variety of different processes across a multitude of territories; thus, it creates ample opportunities for scammers to trick trademark applicants all around the world. 

Another common example of a scam email in this field is, ‘a threat from a third party’ letter. By sending unsolicited messages to selected trademark owners, the aim is to trick namely foreign companies into paying unwarranted fees, as they are unlikely to be familiar with the local regulations. 

Do you love trademarks and listening to podcasts? Tune into our legal podcast "Talkin' Marks"

How to “name-check” yourself

Although there are many ways to protect your company from scam mails, the method of filtering your search through the ‘representatives’ field in an IPO’s website is probably one of the best ways to verify data received from unknown agents. Although, as the recent Liberty Legal Firm example has shown, there is a distinct lack of tools offering these representative search fields on these sites, which could actually stand to be quite beneficial to fraudsters and leave some companies far more susceptible to catfishing. 

Currently, there are no worldwide standards for searching within official trademark offices. Only some of them provide a dedicated e-search platform, and even fewer offices include a representative search field.

Our preliminary search tool, ExaMatch, on the other hand allows you to instantly dive deeper into the data of each trademark application globally, and enables you to search or filter your results by a representative to see all trademark applications represented by that name. 


ExaMatch search filtered by a representative - you get results as you type

Moreover, we provide a Data Coverage Section for transparency, which outlines detailed overviews of the data available in each registry included in the platform, so that users can easily find information and analytics about coverage in that particular region – as well as see an overview of the top registry representatives. 

Data Coverage Section provides detailed information for each registry

Business intelligence

The limitations within official trademark office websites, as outlined above, can be frustrating for representatives or trademark attorneys looking for information about their own personal filings or the filings of their law firm. These limitations also act as a restriction preventing firms from gaining valuable business intelligence about their peers and competition, denying them vital information about other representatives' activities, and a useful overview of their market. In other words, searching by representatives could be seen as a simple preventative measure that applicants could use to check the information they receive from agents, and also help law firms to gain insights into where their industry is heading. 

ExaMatch

ExaMatch is a powerful preliminary search and research tool. It enables trademark professionals to search and filter trademark results in multiple ways: by a representative, owner, owner country, Nice class, application and registration dates, and more. ExaMatch delivers instant exact match results across 180 trademark registries. 

New PHRASE search modifier feature

Recently we added a new feature, the PHRASE search modifier, enabling users to be more specific with their search. The PHRASE search modifier includes STARTS WITH, ENDS WITH, NOT and EXACT. Now Examatch is used not only for identical character search but also for finding suffixes and prefixes. All results can be downloaded in PDF, WORD or EXCEL formats.  

Analyze feature

With ExaMatch, users can access owner overviews and a visualized analysis of search results (including trademark statuses, registries, top representatives, trademarks per year, classes and products, and more).

TrademarkNow system requirements

Our web-based software and online platform can be accessed by users at any time, from anywhere in the world. No special system requirements are needed, so you don’t need to install anything, download any software or worry about upgrades. TrademarkNow adheres to the strictest security and data protection standards.

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By Gokcen Uzer Cengelci / Lisa Wright
Gokcen Uzer Cengelci, Trademark Counsel at TrademarkNow, worked as a trademark attorney for over 12 years in top-tier trademark law firms where she specialized in opposition procedures and trademark portfolio management strategies. She regularly publishes articles on trademark law and has a deep interest in the role of legal tech in IP. Lisa Wright, Content Writer at TrademarkNow is a graduate of the University of Law. She researches and publishes books, articles, and webinars on global IP law and trademark activity.

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