Attention brand owners and users of the Amazon Brand Registry: you need to be aware of a scam currently happening at the United States Patent and Trademark Office (“USPTO”). Scammers are submitting fraudulent requests to change email correspondence addresses for trademarks owned by other parties. As soon as the email address is changed, the scammer contacts the Amazon Brand Registry to register the trademark using the scammer’s email address. This is a relatively new scam, but it has rapidly increased in scope in recent weeks. While the first few waves of this scam affected about a dozen marks each, the USPTO caught over seventy similar attempts on Monday of this week alone.

Losing control of one’s brand on the Amazon Brand Registry can have a serious business impact. In addition to potential lost sales for any downtime on Amazon, losing the Brand Registry can prevent trademark owners from addressing counterfeit sales. It can take days or weeks to resolve and correct these issues, which can further enhance the damages felt by trademark owners.

At the present time, these scams can be difficult to prevent. The only advance notice you would have would be an email from the USPTO alerting you that a request was submitted to change the email address for one of your trademark properties. The USPTO is now aware of the scam and is reviewing change of correspondence requests, but it is not possible for them to guarantee that every scam attempt will be prevented. Older trademark properties may have unused or forgotten email addresses associated with them, and the initial email notice may go unseen.

You should regularly monitor the email accounts associated with your trademark properties so that you can spot these attempts early in the process. The USPTO has noted that the bulk of fraudulent attempts have come from AOL, Gmail, 163.com, and Zoho email accounts, but the scammers have also used slight misspellings of United States law firm names. In the case of any suspicious change, the USPTO is recommending that you quickly file a new Revocation and Power of Attorney. They are recommending that you avoid using a standard Change of Correspondence form because those forms are now being closely monitored and as a result there will be a processing delay. You should also contact the Amazon Brand Registry to request that any incorrect registration be revoked. Finally, you should contact the USPTO at teas@uspto.gov to let them know that you think one of your trademark properties might have been compromised. An unexpected notice from the Amazon Brand Registry might also alert you to this situation, and you should check the “cc” area of any email you receive because it may list a scammer’s email address.

If you have received an unexpected “Change of Email” notice, or if you think that one of your properties might have been compromised, please do not hesitate to reach out to one of our trademark and branding professionals for help in formulating a quick response.

Last week I was fortunate to attend the Managing the Trademark Asset Lifecycle Conference, hosted by World Trademark Review.  The topics discussed throughout the day touched on everything from assessing portfolio strength and valuation to leveraging the financial value of a brand.  Although it is impossible to touch on all the points covered during this full-day conference, there were several high-level takeaways worth sharing.

  • The Three F’s of Intellectual Property Audits: Foresight, Fluidity And Flexibility. As with many facets of corporate life, too many companies wait to audit their Intellectual Property (“IP”) until the need arises.  This approach often leads to unnecessary scrambling, stress and lost opportunities.  Rather than taking a defensive or reactive approach to auditing, companies should think proactively, instituting budget-appropriate processes whereby data is routinely collected and maintained in accessible form.
  • Getting Rid Of The “IP Department” Mentality. One of the biggest mistakes a company can make is to limit the involvement of in-house IP counsel or the portfolio management team in the day-to-day management of the company.  IP affects all aspects of the company, from marketing and sales to international tax and finance, and IP counsel should be involved in all meetings where such issues are being discussed.
  • In-House Counsel As Brand Ambassadors and Educators. IP counsel and portfolio managers should be acting as brand ambassadors, not enforcement agents.  Although there may be instances where reactive steps must be taken, every effort should be made to continuously and positively educate company personnel regarding the use and importance of IP which, at the same time, should create additional enthusiasm regarding the brand.
  • The New IP Portfolio: Not Your Grandparents’ IP. Although obvious to some, companies need to recognize that IP is no longer simply about trademark and copyright registrations.  IP touches all aspects of a company’s public persona, from its customer lists and goodwill to its website, internet domains/extensions, and social media handles.  These valuable assets can no longer be ignored.
  • Attorneys As Revenue Generators: Help Me Help You. Attorneys are often brought in when an issue arises (the reactive/defensive approach).  However, IP attorneys are uniquely equipped with the insight and experience to add value and identify potential opportunities that may be overlooked by corporate decision-makers.  IP attorneys cannot identify opportunities if they remain in the dark as to the day-to-day operations and goals of the company.  Taking time to brainstorm with counsel is an investment worth making.
  • Adjusting To The Times: The Evolution of a Brand. Companies that refuse to recognize change or are resistant to evolving their brands will be left behind.  One great example came from Colm Dobby, Associate General Counsel for Mastercard Inc., who discussed the evolution of the “Master” brand in light of the fact that “Cards” are no longer the only or preferred mechanism to purchase goods and services with credit.
  • Beware Of Domain-Driven Branding. The Internet has revolutionized the way companies market and sell their goods and services.  As a result, many companies now consider an Internet domain more important than the overall brand itself.  In some cases, companies will look to the availability of a particular domain when considering a new brand.  Others have initiated a process of buying up all potentially similar domains (and domain extensions) to discourage others from building a brand based solely on the availability of a particular domain.  Although domains are undeniably important, companies should not be blind to other considerations when analyzing the strength of a brand.

In this third and final blog of our series on social media promotion we are looking at use of content posted by others, particularly in the context of “linking” and “framing.”

“Linking” is a well-known method of providing an Internet user with the ability to jump from one site or page to another via hyperlink.  The link may redirect the user to content posted by others with no connection to the host site.  “Framing” is similar to linking but the user views the third-party content in a window or “frame” on the host site.  This distinction may be significant because without redirection the user may be unaware that the framed content is being generated by a third party.

There are a number of legal issues that may be implicated by linking and framing, including contract, trademark and copyright law.  Many social media providers include terms of use that place restrictions on the use of content available through their service.  Linking or framing may violate those restrictions, which could lead to account deactivation and the like.  Deactivation can be a significant problem for commercial users who use those sites for promotion and customer interaction. Continue Reading Social Media Promotion: Dos and Don’ts with Content Posted by Others

In this second blog of our series on social media promotion we are looking at the use of names – of people, brands or businesses – and likenesses.

Areas of law that often arise at the juncture of names and likenesses, and social media, are the right of publicity, trademark protection and defamation.  Although there are variations in different jurisdictions, the right of publicity generally provides that each person has the exclusive right to commercially exploit their own name and likeness; use by anyone else requires permission.  Trademark laws also protect names, but the focus is on the impact on the public:  where a company’s use of a name is likely to cause the public to be confused about the source of products or services that use is usually prohibited.  Defamation is a false statement made, e.g., via social media, which causes harm to an individual or business, such as a derogatory statement that hurts the individual’s reputation and as a result diminishes the economic value of that person’s name and likeness. Continue Reading Social Media Promotion: Dos And Don’ts With Names And Likenesses

Microsoft has taken down the beta version of its new Bing Image Widget following a copyright infringement suit brought by Getty Images, an owner and distributor of a massive collection of digital works available on the Internet.  According to the papers filed by Getty, the Bing Image Widget, which launched in late August and was already in use on websites throughout the world, allows users to create a display panel of digital images (in collage or slideshow format) collected through a customized search using the Bing Image Search Engine.  The panel may then be embedded on a user’s own website in a manner that “masks the third-party source” and creates “the appearance that the image is instead coming from the Bing-branded display panel.”  The images collected by the Bing Image Search Engine, and later included in the user panel, include copyrighted images owned by Getty.  According to Getty, the use of the Widget to collect and display copyright-protected images constitutes “brazen” copyright infringement, “and the scope of that infringement is staggering.”

As is the case with all new technologies, the Court will be tasked with extrapolating from and analogizing to existing technologies and case law to develop a framework within which to analyze the propriety of the Widget.  Although no opposition has been filed, Getty’s papers in support of its motion for a preliminary injunction provide an anticipated roadmap for some of the arguments Microsoft may make in opposition to Getty’s claims, including fair use, reliance on the “server test” adopted by the Ninth Circuit in Perfect 10, Inc. v. Amazon.com, Inc., and sourcing issues that may implicate the Supreme Court’s recent decision in American Broadcasting Cos. v. Aereo, Inc.  The case may also involve aspects of the Digital Millennium Copyright Act and the current law on “linking” and “framing” (a topic which will be discussed as part of our IP Law Outlook series on social media promotion).  An emergency hearing on Getty’s requested injunction is set for September 17 in the Southern District of New York.  We’ll be watching this case to see how these legal issues unfold.