Trademark filings are public records. The United States Patent and Trademark Office database contains names and addresses of owners of trademark applications and registrations. A disturbing trend that has reached epidemic proportion is the use of that data by third parties trying to scam trademark owners. If you own a trademark registration and receive any correspondence from any entity other than the attorney you used to obtain that registration, be very leery before responding.
Trademark owners are receiving Notices, Reminders and Warnings from such ominously named entities as “The Patent and Trademark Bureau,” “Trademark Compliance Center,” “Brand Registration Office,” “International Patent and Trademark Office,” “Trademark Renewal Service,” the “U.S. Trademark Compliance Office,” “Register of International Patents and Trademarks,” and the “Worldwide Database of Trademarks and Patents,” to name a few.
The mailings look “official” (as is pictured here) and often contain language from and citations to various statutes and rules. In addition, the return addresses are made to look legitimate — 2200 Pennsylvania Ave., Washington, D.C., 500 Montgomery Street, Alexandria, VA; 15 Rue De Tunnel, Geneva, Switzerland, etc. However, they are all bogus. In fact, the USPTO has cultivated and published a list of over fifty such sham entities on its website and the number keeps growing.
There are a few common scams. First, many of the letters request payment of fees for registration of a trademark in some directory or publication in some, usually, international journal. However, there are no fees for publication in the USPTO and no “directories” where registration or inclusion of a trademark is required. At best, a trademark might be included in some private journal or database but this inclusion will confer no rights on the trademark owner in the United States or in any other country. It is a money grab targeted to the gullible. Fees for this service range from several hundred to over two thousand dollars.
Some entities will offer services in connection with recording a trademark registration with U.S. Customs, monitoring new trademark filings for new applications similar to yours or monitoring registration of new domain names containing your trademark. While there are legitimate businesses who offer services like these, most of the mailings received by trademark owners touting such services are scams and should be avoided. Anyone interested in receiving monitoring services like these should do due diligence into the entity offering the service.
Another common scam relates to trademark renewal and maintenance filings. True, a trademark owner is required to make certain filings between the fifth and sixth years of registration to keep a registration active and upon the tenth anniversary to renew a registration. However, trademark scammers regularly falsify the dates filings are due and make contact sometimes two-plus years before any actual due date and alarm trademark owners with threats that a registration will be cancelled if they do not act. An unsuspecting trademark owner could then end up paying “renewal fees” to some entity who absconds with that payment, leaving the trademark registration to lapse and abandon or the owner with having to pay legitimate fees at the time a renewal or maintenance filing is due.
In addition, the Asian domain scam provides yet another chance to swindle a trademark owner. In this scam, a trademark owner receives an unsolicited alert from a domain Registrar located in Asia who indicates some company is trying to register a domain containing your trademark. The Registrar indicates you could consent to that registration and give up your trademark rights in Asia, or buy the domain yourself, as well as the same domain in other Asian countries, all through that Registrar. The scam here is that there is almost never another entity trying to register any domain and the price paid to register the domain through the solicitor is usually several times higher than registering directly.
While there are other scams, these are some of the most common. A final note of caution: regardless of the exact nature of the scam, these scammers usually request payment by wire transfer. Doing so will expose your banking information to who knows what kinds of persons and entities. So for this reason alone, before responding to anything seeking payment, a trademark owner must be cautious.
When it comes to correspondence relating to your trademark registrations, the best practice is to rely only on correspondence from the attorney you used to obtain the trademark registration in the first place. Any official correspondence will go through that counsel of record. Scammers cull address information from publicly available data and prey on gullibility. If you have any questions about legitimacy of any trademark related correspondence, check with your attorney. If you obtained your registration on your own and are uncertain about any correspondence, feel free to contact one of our Intellectual Property attorneys for insight. I may be reached at firstname.lastname@example.org or by phone at 239-344-1153.