INTA 2022: USPTO officials reveal how they fight fraud

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

INTA 2022: USPTO officials reveal how they fight fraud

Amy Cotton, deputy commissioner for trademark examination policy at the USPTO, speaks out on fighting scams.

Three USPTO employees delved into how the office contended with fraudulent marks and scams and why such activity was a headache for brand owners

Fraudulent trademarks and scams were plaguing US trademark owners and the USPTO, but the office had taken several steps to address the issue, speakers said at the INTA Annual Meeting in Washington DC today, May 3.

Three officials from the USPTO and a private practice lawyer set out how to stop suspicious activity in their panel called ‘Protecting Its Customers and Itself: How the USPTO is Responding to Fraud and Fighting Back’.

Amy Cotton, deputy commissioner for trademark examination policy at the USPTO, said fighting scams had been a huge part of her life since she took the job more than a year ago.

She noted that bad actors looked to take advantage of trademark owners in several ways. Some scammers had used the office’s publicly available data to solicit customers and get them to pay inflated fees.

Others had posed as the USPTO and spoofed the office’s email addresses and phone numbers to make their scams seem more credible.

Foreign bad actors had also hijacked or even rented attorney credentials to comply with the rule that foreign-domiciled applicants had to be represented by US-licenced attorneys, said Cotton.

Speakers noted that fraudulent actors sometimes reached out to US lawyers directly in attempts to use their credentials.

Will Covey, deputy general counsel and director of the office of enrolment and discipline at the USPTO, shared an email with the audience that someone had sent to a US attorney asking to rent the lawyer’s licence in exchange for a yearly fee.

Covey noted that he had received questions from lawyers asking whether they could agree to such arrangements. He clarified that the was answer “no”, of course.

“The sad thing is that in some of these cases, they were offering around $15 per application. These are small amounts of money that US attorneys are putting their bar licences at risk for,” he said.

Speakers said these types of scams often lead to fraudulent trademarks on the registry, which harmed brand owners in a few ways.

Belinda Scrimenti, partner at Pattishall McAuliffe Newbury Hilliard & Geraldson at Washington DC, said false filings forced the USPTO to put more resource into examining and scrutinising applications, which exacerbated wait times.

She added that fraudulent filings increased the odds that filers would have applications cited against them.

Fighting fraud

There were several steps the office had taken to cut down this bad activity, said speakers.

One was going through petitions for ex-parte expungement and re-examination proceedings that it had received. These proceedings, intended to make it easier to cancel marks that were no longer in use, came into effect as part of the Trademark Modernization Act, which was passed in December 2020.

Cotton said the office had a group of top-notch attorneys examining these petitions, including judges at the Trademark Trial and Appeal Board and employees from the Office of the Solicitor at the USPTO.

“Every single petition is a policy discussion,” noted Cotton.  

The USPTO also used a bot to run all incoming addresses against the US postal service list to find improper ones. If it found an address that looked suspicious, it would flag it for the examiner, who could then issue a refusal, said Cotton.

She added that the USPTO had also sent over information about scams to law enforcement.

Michael Mangelson, principal counsel and director for China IP at the USPTO, also spoke on the panel. Jason Garcia, partner at Reed Smith in Silicon Valley, moderated the discussion.

The INTA Annual Meeting is being held this week at the Walter E Washington Convention Center in Washington DC.

more from across site and SHARED ros bottom lb

More from across our site

Counsel explain how AI can create brand protection headaches, but also be used to fight fakes
An AI copyright update in the UK and IP protection efforts by Temu and WeChat were also among the top talking points this week
Mary Till says she has been helping clients navigate policy questions, including staffing concerns at the office
A seminal decision concerning second medical use patents and questions over confidentiality were among the top talking points this fortnight
Managing IP considers some of the key themes from the 2025 Annual Meeting and offers some tips for London 2026
A comparison of the 2024 and 2025 editions of the Managing IP EMEA Awards reveals the firms and companies that have been dominating Europe’s IP market year after year
Tuesday's coverage includes BD tips for aspiring partners, and a foray into the world of SEPs
Exclusive data reveals law firms are failing to go above and beyond for their corporate clients, with in-house counsel saying advisers should consider more transparent billing processes
Arty Rajendra and Gary Moss discuss why ‘thorough and intense’ preparation, plus the odd glass of wine, led to a record FRAND victory for their client
Monday’s coverage includes news of a potentially 'game-changing' trademark development in China and how practitioners are using AI
Gift this article