Trademark owners have been the
targets of several types of fraudulent schemes.
Here are some of the more common ones:
“Greetings from [a foreign country].
We have been asked by company ABC to register the mark XYZ as their
brand name and their domain name. But,
we noticed XYZ is similar to your brand name. Let us know if you gave them
permission.”
Company ABC is most likely fictitious. If you write back saying you did not give ABC
permission to pursue these registrations, you will be given the opportunity to
pursue domain name and trademark applications in that country. Even if legitimate filings result, you may be
paying excessive fees.
“Greetings from the United States Trademark Registration Office
(USTRO). Upon payment of this invoice
for $395, we will register your trademark XYZ with the U.S. Customs and Border
Patrol. In addition, we will monitor
your mark with our proprietary search engine and alert you to possible third
party infringement. We look forward to
your prompt payment.”
“USTRO” sounds a lot like “USPTO,’
the acronym for the United States Patent and Trademark Office. While the USPTO is a U.S. government agency,
the USTRO is a private firm in Los Angeles offering expensive and possibly
unnecessary registration services.
Variations of this scam have come from sources such as the “United State
Trademark Agency” or the “Trademark Monitoring Service” with offers to monitor
the progress of your trademark application for you or to provide trademark
renewal reminder services, neither of which have much value and would be
duplicative of the efforts of your trademark counsel.
“You are cordially invited to have us list your trademark in the TM
REGISTER / The International Trade Marks and Service Marks Catalog.”
This is an invitation to extract a
hefty sum from your bank account in exchange for the opportunity to include
your trademark in a publication that no one looks at and that has no value.
On the patent side, there have
been similar efforts:
“The international patent application cited above has been Published in
the WIPO Gazette. This form is an offer
to register your international patent application in our internet database and
access to all database services.”
This offer appears in the form of
a very official-looking invoice from “World Patent & Trademark Services,”
or “World Patent & Trademark Organization,” or “World Intelligent Property
Office,” etc. The latter is particularly
devious because of its similarity to the legitimate “World Intellectual
Property Office” (WIPO). When you file
an international patent application, it does get published in the WIPO Gazette,
so that part of their letter is true. In
fact, that’s where they got the administrative details of your international
patent application that may be printed in their letter, perhaps along with the
abstract or a representative figure from your application. It may even have a fancy seal embossed into
it. Those who are taken in by this “offer”
may have their international patent application included in a database that no
one looks at, in exchange for hundreds or even thousands of dollars.
We’ve seen fewer attempts to take
advantage of U.S. patent applicants with similar offers, but vigilance is
always called for.
The bottom line: if you’re in
doubt, contact your IP attorney with any suspicious correspondence - he or she will
be able to quickly assess its validity and help you avoid such costly and
valueless schemes.