What to Do if You Received a Notice from the USPTO Stating: False, Fraudulent, or Mistaken Designation Advisory.
If you’ve received a notice from the U.S. Patent and Trademark Office (USPTO) stating that an attorney was falsely or fraudulently designated as your representative, you are not the only applicant to be scammed. This advisory indicates that your trademark application or registration was associated with a non-authorized attorney, which could compromise your rights. It’s critical to act swiftly and correctly to avoid further issues and ensure that your application proceeds smoothly.
Understanding the USPTO Notice
The USPTO notice informs you that an attorney was designated as your representative either falsely, fraudulently, or mistakenly, and the attorney’s representation is therefore not recognized. As a result, the attorney and correspondence information linked to her has been removed from your trademark record.
Here’s a breakdown of what this means:
The Designation of Representation is Invalid: Any past or current designation of your “attorney” has been nullified under 37 CFR §2.17(b)(4).
Future Correspondence Has Changed: The correspondence information related to the attorney has been removed. The USPTO will now communicate directly with the address on record unless you update your contact or attorney information.
Foreign-Domiciled Applicants Must Retain a Licensed U.S. Attorney: If you are a foreign-domiciled applicant or registrant, you are required to appoint a licensed U.S. attorney to continue the trademark application or registration process. This is not optional—your application will be cancel if you do not comply.
Steps to Take if You’ve Been Affected
Review Your Current Correspondence Information
Check the notice and your USPTO record to confirm where future communications will be sent. If the contact information is outdated, you need to update it immediately to ensure that you don’t miss any important deadlines or correspondence from the USPTO.
You can update your contact information directly via the USPTO's Trademark Electronic Application System (TEAS).
Identify Whether You Need a New Attorney
If you are foreign-domiciled, it’s essential to hire a U.S.-licensed attorney to continue with your application or defend your trademark registration.
If you are domiciled in the U.S., you can proceed without an attorney, though hiring a qualified attorney is often beneficial, especially if your application has encountered issues like fraud.
Appoint a New Attorney if Necessary
If you need to hire a new attorney, select one who is licensed in a U.S. jurisdiction and has experience with trademark matters. They will assist you in reviewing your case and making the necessary updates to your records with the USPTO.
You or your new attorney must file an “Appointment of Attorney” form through TEAS to officially designate a new representative.
Check for Signs of Fraud or Misrepresentation
Review your communications and any filings in your case to identify whether anyone falsely posing as an attorney, engaged in any improper activity that may have harmed your trademark application or registration. This may include unauthorized filings or misrepresentations made to the USPTO.
Stay Aware of Deadlines
While resolving this issue, make sure you don’t miss any critical USPTO deadlines. Failure to timely respond to Office actions or submit necessary filings can result in your trademark application being abandoned or your registration being canceled.
Refile if necessary
If a fraudulent attorney was involved in handling your trademark application and it hasn't been registered yet, the USPTO may cancel your application and require you to refile. Since the administrative review process can take over a year, it’s often wiser to cut your losses and submit a new application to avoid potential complications.
The Importance of Using a Licensed Attorney
This situation underscores the risks of working with unlicensed or fraudulent individuals. It is important to check that the person you are working with is a licensed U.S. attorney. Trademark law is highly specialized, and improper handling of your application can result in serious consequences. U.S.-licensed attorneys are bound by ethical and professional standards and have the training to guide you through the complexities of trademark law.
How an Attorney Can Help You Now
An experienced trademark attorney can help you:
File appropriate updates with the USPTO to reflect correct attorney and correspondence information.
Respond to any issues or Office actions that may arise as a result of this situation. However, since the application is already filed, the attorney can only manage the hand they are dealt.
By acting promptly, you can protect your trademark rights and ensure that your application or registration stays on track despite this setback. Working with a licensed attorney like myself will help restore confidence in the process and avoid further complications.
Conclusion
Receiving a USPTO notice about a false or fraudulent attorney designation can be alarming, but taking the right steps can resolve the situation, however, in most cases it's best to refile. Whether updating your contact information, appointing a new attorney, ensuring compliance with USPTO rules or refiling with a real attorney, your prompt action is essential to protecting your trademark rights.
If you have been impacted by this issue or are unsure about your next steps, I’m here to help. Contact my office today to get your application back on track.