Information regarding your company’s trademark application or registration that is provided to the United States Patent & Trademark Oﬃce (USPTO) or to foreign trademark authorities can be easily accessed by the public. For example, 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 about 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 dubious operations that use the information to send misleading notices to trademark owners about highly questionable or non-existent services. While many of the schemes are easy to spot because the notices contain misspellings, poor grammar or obvious inaccuracies, the more sophisticated operations now use official-looking notices that appear to be from a governmental agency, and 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 the following categories:
Trademark Maintenance Scheme
One of the oldest schemes involves a company sending a notice to a trademark owner that the trademark registration is ready to expire and will become abandoned unless certain renewal or maintenance fees are paid. The company offers to file the required paperwork with the USPTO or foreign governmental registry in return for a fee that is several times higher than the fee actually charged by the USPTO or other registry. The notice is 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 the notice sometimes include a disclaimer in small print that the solicitation is not being sent by the official registry, the notice is made to look as official as possible with the hope that trademark owner will overlook the disclaimer. Above, is an example of one of these deceptive notices we recently received from the official sounding “Patent and Trademark Office” regarding one of our firm’s trademarks.
Another misleading scheme that targets our clients and other trademark owners involves an “official” notice from the “Trademark Compliance Office” about recording a trademark registration with U.S. Customs and Border Protection (“CBP”) to protect against infringement. To the right is an example of a notice recently received by one of our clients. While the CBP does have an optional program under which a trademark owner can record a trademark registration, this program offers little, if any, benefit to most trademark owners.
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 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.
To the right is an 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, paying 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.”
As you can imagine, scammers are creative and may use variations of the misleading schemes described above. The best way to avoid becoming a victim is to remember the following: If we 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 is probably part of a scam. Lastly, if you have any questions about whether a notice is legitimate or how to better protect your valuable trademark rights, please do not hesitate to contact us.