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Intellectual Property Law

Unbeknownst to corporate lawyer, scammers used her name to file thousands of trademark applications

By Anna Stolley Persky

October 22, 2024, 1:38 pm CDT

Ana Belén Vinueza doesn’t consider herself an expert in intellectual property law. As in-house counsel at Illumina, a California biotechnology company, she works on the commercial legal team and her area of expertise is corporate law.

Vinueza works on a hybrid schedule, either from home or from her office in Foster City, California. In July, Vinueza stopped by the office after a six month-long stint working solely from home. She was shocked to find in her mailbox four cease and desist letters concerning trademarks she allegedly had filed.

“My initial reaction was, ‘What is going on here?’” Vinueza says. First, she froze. Then she made some phone calls.

That’s when Vinueza discovered her credentials and identity as an attorney, without her permission or knowledge, had been stolen and used to file more than 2,000 trademark applications with the U.S. Patent and Trademark Office.

Vinueza isn’t the only lawyer to have her identity stolen to file trademark applications, says Rachael Dickson, senior trademark attorney with Lloyd & Mousilli, who uses social media to discuss trademark law and practice. Scams involving stealing attorney identities and bar credentials specifically to file trademark applications are apparently becoming increasingly common, she adds.

In September, Vinueza reached out to Dickson, whose X handle is @TudorsAndTMs. Together, they used X and LinkedIn to highlight what happened to Vinueza.

Dickson, who used to work at U.S. Patent and Trademark Office as an examiner, says she’s been trying to warn other lawyers for years about scams related to trademark applications. She’s now hearing about other victims of similar identity theft scams, and so far, they have all been female attorneys from California.

“This is a gigantic problem,” Dickson says. “I feel like the U.S. Patent and Trademark Office needs to be acting with more urgency.”

The scams are typically used to circumvent rules requiring that foreign-domiciled trademark applicants have a U.S.-licensed attorney, according to the agency.

David Gooder, the U.S. Patent and Trademark Office’s trademark commissioner, says while the misuse of credentials isn’t a new scam, “we have seen a slightly different fact pattern recently” indicating that a “foreign criminal syndicate” is targeting the trademark system.

“These scams are designed to draw out the trademark application process so that the scammer can mislead the applicants into paying money for unnecessary services,” Gooder says. “These scammers are not interested in obtaining registrations for the applicants as long as they can mislead and pressure applicants to hand over inflated fees along the way.”

He says scammers find small businesses looking for trademark protection and use stolen lawyer credentials to get the registration process started. The agency is aware of approximately 30 lawyers whose credentials have been used recently in trademark scams, he adds.

The U.S. Patent and Trademark Office is developing improved technology so it can move faster to suspend accounts being used by scammers, Gooder says, and it is working on predictive analytics to help create a risk profile for submissions.

“The USPTO is not a law enforcement or consumer protection agency, so we do not have the authority to prosecute the entities behind this scam,” he adds.

Gooder also says the agency is working with law enforcement, the Federal Trade Commission and other federal agencies to raise awareness. Additionally, in September it sent out an email alert warning lawyers to check whether their bar credentials are being “hijacked.”

“While we have trademark rules prohibiting the false, fraudulent or mistaken designation of an attorney and processes in place to help us identify wrongful appointments, you can help us find them faster,” the email read.

Additionally, the communication encouraged lawyers to use the trademark search bar to “to see if your name is listed on any applications or registrations.” Individuals who discover their name on a trademark application can then report it to [email protected].

The agency recommends that lawyers be on the lookout for scams like this or something similar, which could put them or their clients at risk. Some common scams are detailed on the U.S. Patent and Trademark Office website.

Scammers, Dickson and Vinueza say, are luring trademark applicants on platforms like Fiverr, an online marketplace that connects freelancers with clients in need of services.

“Each complaint was handled on a case-by-case basis, and when we received evidence of misrepresentation, we removed the users immediately,” says Siobhan Aalders, vice president of global communications at Fiverr. “We have many mechanisms in place designed to address misuses of the platform. We take a no-tolerance approach when it comes to ensuring the safety and security of Fiverr users.”

When Vinueza realized her identify had been stolen, she also learned there were thousands of people who thought she was their lawyer. Some of them tried to contact her through emails or calls. Sometimes they were angry about the work they believed she had done or had failed to do for them. Some were upset that they’d had to hunt her down because they believed it should be easier to contact someone they’d thought they’d hired, Vinueza says.

“It became unbelievably upsetting that all these people thought I was their attorney,” she says. “I was worried that it would all affect my professional reputation. I had to clear my name, but it was overwhelming and took so much time.”

The U.S. Patent and Trademark Office took several weeks to remove the trademark registrations in her name, she says. But for several months, her name still appeared on hundreds of new trademark applications.

Vinueza also says leading up to the discovery of the scams involving her name, she’d received some emails related to trademarks but thought they were spam and deleted them. She warns other lawyers to check for the kinds of emails she’d deleted because they might be red flags that they are the victims of an identity theft scam.

Dickson is moderating an Oct. 29 webinar to discuss the “common tricks” scammers use to target trademark applicants and lawyers. Venueza will be a panelist.

“Look, nobody wants their reputation trashed because someone started representing themselves as you,” Dickson says.