“A lawyer’s worst nightmare” – attorney voices horror after falling victim to trademark impersonation scam

• California-based attorney shares experience of impersonation by scammer
• Confronted impersonator by phone and filed DMCA takedown request
• Warns other attorneys to take measures to minimise impersonation risk

In an interview with WTR, a San Diego-based attorney has spoken of her shock at finding out that she was the victim of an impersonation campaign by a fake law firm sending out cease-and-desist letters in her name. In a stark warning to the legal community, trademark attorneys are urged to take measures to reduce the risk of impersonation by fraudulent entities operating around the world.

Early last week, Kayla Jimenez, a partner at US IP Attorneys and an adjunct professor at the University of San Diego School of Law, was contacted by a member of the public claiming that she had emailed them a cease-and-desist letter. After investigating the letter (click to view a redacted version), she discovered that it had been sent by someone using her name from a law firm called Zenith Law Advisors. On top of that, the letter contained numerous typos and a falsified screenshot of a USPTO trademark record.

“It’s a lawyer’s worst nightmare,” Jimenez tells WTR. “The scarier thing was that it’s really close to legitimate; it looks like an authentic cease-and-desist letter, albeit with spelling errors, but it didn’t ask for money, so it wasn't an automatic tip-off like many scams are. Quite frankly, I’m proud of the person that brought it to my attention for not just going to the website address that was listed in the letter, but actually Googling my name.”

Further investigation discovered that Zenith Law Advisors had a website with a ‘Kayla Jimenez’ profile that was a direct copy of her legitimate firm biography, “sloppily edited”, Jimenez notes, “to make it look like I work at Zenith Law”. The profile used a stock photo rather than a photo of Jimenez. As well as the biography, the page also included a phone number. So Jimenez called it.

“I played along, pretending that I had received a letter, and asked questions to the person on the other end about my biography; were they a professor of law at USD? ‘Yes,’ they said. Had they worked at AVELA? ‘Yes,’ they claimed. At some point, I lost it, and I told them that they’re a liar, that I’m Kayla Jimenez and I’m onto them. And then, click, they hung up.”

Within seconds, she had sent a pre-prepared DMCA complaint to the web host based on the copyright of the biography text. Hours later, “the site was completely scrubbed” (although a version of the site appears on the Wayback Machine). 

“The situation was scary because there’s no playbook [on what to do],” Jimenez explains. “I don’t know any attorneys who have gone through this, so after the website was taken down, I made a list of who I needed to contact – from the California and DC Bar Associations, to submitting reports to the USPTO, to the Attorney General for the State Of California and, because I suspected this must be some type of computer crime, the FBI.”

Crucially, she further discovered that Zenith Law Advisors appeared to be part of a wider network linked to past WTR reporting on fraudulent trademark filing agents targeting US business owners. “The victim said the only way the impersonator would have access to their name and personal email address is through the online third-party trademark filing agency that they had used,” Jimenez notes. “The scammer’s goal appears to be to get personal information from the victim and force them to come back for more services at exorbitant rates. My guess is that the second level of the scheme is sending out fake cease-and-desist letters so they freak out and go back to the agency, which then charges an extortionate fee to ‘take care of it’.”

Therefore, the scam campaign appears to involve creating legitimate-looking law firm websites with the sole purpose of making these fake cease-and-desist letters look authentic. To do that, they may use the names, biography information and sometimes photos of real trademark attorneys. “It is terrifying, and attorneys need to be aware of this and be prepared to act as quickly as possible,” Jimenez says.

Proactive steps can also be taken, such as setting up Google Alerts for instances of a name or firm biography text being used on the web. WTR will publish a full guide on what trademark attorneys can do to monitor for impersonation later this week.

Looking ahead, Jimenez confirms that certain federal authorities have been “helpful” and are conducting investigations. However, she claims that the response from the USPTO has not been what she expected. “I sent a message to the USPTO, including sending them the fake letter and trademark record,” Jimenez says. “The USPTO response appeared to be a generic 'canned' response that seemed to assume it was just a problem involving me and my name. I reminded them that the scammer is using a falsified USPTO record to freak out a member of the public, and I have not yet heard back from them. Ultimately, I don’t think the USPTO really really understands what is going on – but they should be concerned about this.”

WTR has contacted the USPTO and will update this article if a response is received. 

The American Bar Association should also “make this a top priority” by warning attorneys about the risk of impersonation and finding ways to support them in searching for impersonation online, Jimenez insists. “Impersonation of a real attorney is terrifying,” she adds. “Even worse, though, is that innocent people trying to protect their brand are caught up in this scheme.”

WTR has attempted to contact Zenith Law Advisors, but the firm’s email address is no longer active and its phone number failed to connect. Worryingly, WTR has identified at least two more suspicious law firm websites that appear to be directly linked with this campaign, making it an ongoing cause for concern.

For this reason, all trademark attorneys are encouraged to take measures to monitor for impersonation on fake law firm websites as well as trademark filings, and to have a plan prepared in case illicit activity is identified.