IP Owners Beware! A Con Artist May Be Behind that Official-Looking Letter

The World Wide Web promised an infrastructure for the free flow of information.  For Intellectual Property (IP) owners, this meant free, instant access to patent and trademark administrative details and status.  Unfortunately, the same types of people who call at inconvenient hours, professing to be from the “Revenue Service,” and demanding payment of a (fictitious) delinquent debt are using the same Web resources to target patent and trademark owners.  Despite efforts aimed at raising awareness in the IP community, scammers continue to produce sophisticated, official-looking communications that sometimes succeed in trapping the unwary.

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.