Trademark Scams Protect Your Brand and Your Wallet

Photo of Wallet with Lock: Protect Your Brand

Trademark Owners are being inundated with trademark solicitations and scams from a variety of sources.  The trickery often begins with an abusive and misleading email.  One may wonder how this happened.  The United States Patent and Trademark Office Database is publicly available.  Thieves, swindlers, and unethical individuals are taking advantage of this information and soliciting trademark owners for bogus payments.  Rarely are legitimate services rendered by these individuals or organizations.  If you have received a Notice, an Invoice, a Bill, or even an Email requesting you to act, be cautious of the source and check with your trademark attorney immediately to protect your brand.

  • The Trademark Invoice Scam

We are seeing an explosion of bogus invoices sent to Trademark Owners under the guise of vaguely official sounding names like the “Patent and Trademark Office,” the “Trademark Compliance Center,” the “Brand Registration Office,” the “International Patent and Trademark Office,” the “Trademark Renewal Service,” the “U.S. Trademark Compliance Office,” the “World Organization for Trademarks,” the “Register of International Patents and Trademarks,” and the “Worldwide Database of Trademarks and Patents.”  These are just a few of the organizations involved.  There are so many that the United States Patent and Trademark Office maintains a list of these entities on its website here.

Close inspection of the invoices will reveal that they are actually for inclusion of the registered trademark in a database maintained by the entity issuing the invoice.  Inclusion of a trademark in such databases establishes no international rights and provides no real value to the trademark owner. Generally, your company should not directly receive an invoice from an entity other than your law firm.  The law firm is usually listed as the “correspondence address” for any trademark pending or registered before the United States Patent and Trademark Office.  If the filing originated outside the United States, the United States attorney is usually listed as the “Domestic Representative.”  If your company receives such an invoice or communication, do not pay it.  Instead, refer the invoice to your trademark attorney.

  • The Trademark Maintenance and Renewal Solicitation

A recent twist on the invoice scheme is the trademark registration filing scam.  Notices are sent to Trademark Owners prior to the Declaration of Use filing (a required filing 5 to 6 years after registration) and the Trademark Renewal filing (a filing required every 10 years after the date of registration).  In this scenario, a notice is sent from a company informing the owner of the Declaration of Use and Renewal requirements and requests instructions.  Some of these organizations appear to be government agencies or semi-quasi government bodies.  In reality, these are solicitations from businesses to file your trademark maintenance documents.  In some cases, these are sneaky and opportunistic individuals and companies attempting to get your intellectual property business.  At other times, these are bogus companies that give you the right information but perform no service upon the payment of the fees.  In the most sinister development, some of these organizations give false due dates to create urgency, hasty decision-making and immediate renewal instructions, along with a requirement for payment.  The erroneous due dates are strategically set prior to when your trademark attorney would contact you and advise you of the correct trademark filing requirements.  The Trademark Owner may feel that their trademark attorney was wrong, or negligent, or did not advise them properly, but in reality it is simply false and misleading information conveyed at an opportunistic time.

  • Someone is Stealing your Domain Name

Have you received a notice from an Asian Domain Name Registrar informing you that someone is trying to register your trademark as a keyword or domain name?  As an example, someone is trying to register your business.asia, yourbusiness.co.in, yourbusiness.com.hk, yourbusiness.com.tw, yourbusiness.org.cn and so forth.  This company then seeks your permission to allow the third party to register your business name or trademark.  You, of course, are aghast.  You would never authorize this, please stop them immediately.  Your company is then given the opportunity to register the domain names, at a relatively modest price, so this does not happen again.  This, of course, benefits the registrar, not you, because the company was fictitious.  An indication that an unknown company is about to steal trade names or trademarks often results in purchases of all available domain names at a substantial fee.  Your company likely already has a great deal of trademarks and domain names registered.  The referenced domain names are probably not needed.  Take this time to evaluate your trademark portfolio and domain names, but do not fall for this trick.

  • Who is Amending My Trademark Application?

In the most recent, and possibly the most brazen incident, there are entities masquerading as the attorney of record and changing trademark applications and registrations.  This scam is so disturbing to the Trademark Office that it issued an official alert on October 19, 2018 warning customers, attorneys and the public to be aware of these actions.  The Trademark Office cautions that there are instances of people attempting to change trademark applications and registrations owned by other parties often to take advantage of third-party brand registries.  Any unauthorized change to the primary email or correspondence address associated with a trademark should be treated suspiciously.  If the Applicant, Registrant, or Attorney of Record did not make the change, the Trademark Office and the third party brand registry should be notified immediately.  Fortunately, a careful trademark attorney will be aware of these issues and will investigate any change.  In an effort to help prevent these fraudulent changes, the Trademark Office is sending emails to the Attorney of Record or correspondent to make them aware of the change.  If the attorney or correspondent does not recognize the change, they should take immediate action.  Such action could include filing a Revocation of Correspondence Address, filing a new Appointment of an Attorney of Record, filing a new Designation of Domestic Representative, and/or filing a Request for Withdrawal of Attorney of Record.  Be alert and don’t allow another company to tamper with your trademark rights.

If you have questions about this subject matter, please contact your Intellectual Property attorneys at Smith, Gambrell & Russell, LLP; or contact Scott Woldow directly at swoldow@sgrlaw.com

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