Eversheds Sutherland (US) LLP

On September 15, 2021, the United States District Court for the District of South Carolina imposed significant penalties on a defendant who defrauded thousands of trademark registration holders. The imposition of such penalties is exceptionally rare – there are only a handful of cases where criminal charges resulting in a significant prison sentence have been brought against trademark scammers. Perhaps this decision will quell misleading or fraudulent trademark campaigns that have plagued trademark owners for decades. 

Background on the charges brought against Viktors Suhorukovs

Viktors Suhorukovs established and operated Patent and Trademark Office, LLC, a limited liability company registered in the District of Columbia, and Patent and Trademark Bureau, LLC, a limited liability company registered in New York. Suhorukovs sent renewal notices to many trademark registration holders in the LLCs’ names, which bear a close resemblance to the name of the United States Patent and Trademark Office (USPTO). Additionally, the renewal notices included a QR Code that connected recipients directly to the official government USPTO website. These fraudulent renewal notices misrepresented the expiration dates of various trademark registrations to create a false sense of urgency, and further directed recipients to sign and return the renewal notice. 

When recipients fell victim to these fraudulent renewal notices, they would sign and return Suhorukovs’s renewal notice. Suhorukovs would then send the victims an invoice for the renewal, requesting significantly inflated prices for the alleged renewal services and informing the victims that he would renew their trademark registration. However, because the trademark registrations at issue were not eligible for renewal at that time, none of the fees collected by Suhorukovs were actually paid to the USPTO. Notably, Suhorukovs was in fact incapable of lawfully renewing trademark registrations for trademark registration holders because he is not a licensed US attorney.

Criminal charges for mail fraud were brought against Suhorukovs in early 2020. The case is USA v. Suhorukovs, Case No. 6:20-cr-00210 (D.S.C. Feb. 10, 2020).

Significant penalties imposed following guilty plea

Suhorukovs had defrauded over 2,900 trademark registration holders over a three-year period prior to his arrest. He pled guilty in January 2021, and he was sentenced by Judge Donald C. Coggins, Jr. last Wednesday.

Suhorukovs was sentenced to 52 months in federal prison and 24 months of supervised release. He was also ordered to pay $4,521,593.27 in restitution.

A note to trademark registration holders and attorneys

Trademark registration holders are advised to stay on high alert for such fraudulent communications from entities that are not the USPTO, for example, the “Patent and Trademark Office, LLC,” the “Patent and Trademark Bureau, LLC,” or the “Trademark Compliance Center.” If in doubt, please contact a US-licensed trademark attorney to confirm the nature of such communications.

Trademark attorneys should also note that the USPTO has announced its intent to register its own name and logo as trademarks in order to facilitate future legal action against trademark scammers.

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