Information regarding your company’s trademark registration with the United States Patent & Trademark Office (USPTO) or with government agencies in foreign countries can be easily accessed by the public. The information available through the USPTO database includes, among other things, the date of first use of the trademark, the date and number of the trademark registration, and your company’s name and address. Information regarding the attorneys who helped your company obtain the registration is also part of the public record.
This data is used by a variety of companies for legitimate purposes, but it is also mined by scammers that use the information to send misleading notices to trademark owners about highly questionable or non-existent services. While many of these scams are easy to spot because the notices contain misspellings, poor grammar or obvious inaccuracies, the more sophisticated scams now use official-looking notices that appear to be from a governmental agency, and try to instill a sense of urgency about a deadline that will be missed or about a foreign infringer attempting to hijack the trademark. The most common schemes fall into three general categories.
Trademark Maintenance Scams
One of the oldest scams involves a company offering to help a trademark owner in the renewal or maintenance of a trademark registration. Typically, the services are limited to providing and filing forms available from the USPTO or foreign governmental registry with a substantial mark-up on the fee. As part of the scheme, the scammer sends the trademark owner an official looking notice that the trademark is coming up for renewal. The notices are often sent out before the renewal or maintenance fee can even be paid in an attempt to secure the payment before the trademark owner is notified by its own counsel about the deadlines. Even though these solicitations often include a disclaimer in small print that the solicitation is not being sent by the official registry, the scammer makes the form look official with the hope that trademark owner will overlook the disclaimer. A variation of this scam involves sending an official-looking notice and invoice for filing a registered trademark with US Customs. Click on the example above of a notice received by one of our clients from the USTRO (rather than the USPTO).
Registry Scams
A registry scam is where a company offers to publish a company’s trademark in an international registry that supposedly helps protect the trademark owner’s international rights in a trademark, even if the trademark has not been not been registered in foreign countries. A registration and publication of a trademark by a private company in a directory does nothing to protect trademark rights and is often a complete waste of money.
Click on the example of an official looking notice sent by a scammer that uses “WIPD” with a logo to play off the very similar acronym and logo of the World Intellectual Property Organization (WIPO).
International Domain Name Scam
This type of scam is a common form of “domain slamming” in which an official sounding “domain name registration service” notifies a trademark owner that the service has learned about an application filed by a foreign company to register a top level domain name (such as .cn, .hk, or .asia) for the trademark at issue. The registry offers to help the trademark owner obtain the registration of the domain name at issue before the foreign company’s application has been approved. While there is a risk that a foreign cybersquatter could hijack a company’s trademark in a foreign country by using the trademark as a domain name, responding to the scammer will not help you. Domains are registered at the time they are ordered. In other words, there is no application or audit period as the scammer would have you believe. The notice is merely a “scare tactic.”
If Graves Dougherty assisted your company in obtaining trademark registrations, we will advise you if there are deadlines or other necessary actions that you should take to protect your registration. If you receive a notice or solicitation regarding your company’s trademarks from any company or firm you do not recognize, it probably is part of a scam. If you ever have any questions, feel free to contact Steve Smit at ssmit@gdhm.com or 512.480.5653.
Notice: We are providing this client alert as a commentary on current legal issues, and it should not be considered legal advice, which depends on the facts of each situation. Receipt of this client alert does not establish an attorney-client relationship. The listed attorneys and/or other attorneys may provide services in connection with a particular matter.
{extended} ]]>