Beware of Trademark Scams: Warning Signs for Trademark Owners

Client Alert
December 10, 2019

Trademark scams are on the rise. Over the past year, Sullivan has seen a significant increase in the number of clients who have received misleading solicitations and invoices relating to their trademarks. Every brand owner—from individuals and startups to Fortune 500 companies—is a potential target for trademark scammers and must be vigilant to guard against them. This advisory provides a brief overview of the types of misleading notices brand owners may encounter and five tips to avoid falling into traps.

Types of Scams

Private companies unaffiliated with the United States Patent and Trademark Office (USPTO), the official governmental registry for trademarks in the United States, are using publicly available information from USPTO databases to send trademark solicitations by mail and email to owners of trademark registrations and applications. These agencies go to extensive lengths to project the appearance of legitimacy, when in fact they are engaged in deceptive activity.

For instance, these companies may purport to offer legal services, such as assistance with trademark maintenance, office action responses or renewal filings. Some offer registration of marks in private, non-governmental databases. Many of these solicitations are official-looking documents that request immediate action and payment, and the companies behind these schemes operate under names and acronyms that suggest they are governmental bodies, using terms like “Trademark,” “Registration,” “Office,” “Agency,” etc. Without more, an invoice’s formal appearance should not be viewed as an indication of its legitimacy.

Often, these solicitations create a sense of urgency on the part of the trademark owner. Our clients have received alarming notifications that their trademark registrations are about to expire unless they pay large sums of money to these organisations to ensure renewal. Frequently, the solicitations will use dates that are incorrect. For example, we have seen scammers state that maintenance filings are due a year before the actual deadlines, implying that the first day of a one-year maintenance filing period is the final deadline. Trademark owners, understandably concerned about these types of notifications, may have the instinct to pay these fees without question. However, brand owners are never required to use any service or respond to payment demands solicited by these agencies to maintain the validity of their marks and should disregard any notice not from official governmental registries.

Trademark owners with global portfolios of marks must be specially attuned to the issue of misleading solicitations. This is a global issue, and our colleagues in Europe and around the world have reported a significant increase in the frequency of these types of notifications. U.S. clients, who may be less familiar with the formalities required for registration in foreign jurisdictions, are particularly vulnerable to deception.

Several major official registries, including the USPTO, the European Union Intellectual Property Office (EUIPO), and the World Intellectual Property Office (WIPO), have compiled databases of known scams to warn trademark owners. Though not exhaustive, as these unofficial agencies often change their names and addresses, the links below provide a useful overview of the type and scope of misleading notices currently facing brand owners:

USPTO

https://www.uspto.gov/trademarks-getting-started/caution-misleading-notices

EUIPO

https://euipo.europa.eu/ohimportal/en/misleading-invoices

WIPO

https://www.wipo.int/pct/en/warning/pct_warning.html


Unfortunately, there has been little government enforcement against the purveyors of these misleading notices, who have continued to operate unabated. As a result, trademark owners must remain vigilant.

How to Identify a Scam

Misleading trademark solicitations come in many forms, but they tend to have a few common characteristics as outlined below:

Warning Signs

Examples

1.   Notifications that are not from the USPTO, EUIPO or WIPO, but use official-sounding names that include some combination of “United States,” “Trademark,” “Office,” “Brand,” “Registration,” “Agency” or the like.

2.   Invoices that charge astronomical or irregular fees that you have not previously encountered for the continued protection of your trademark.

3.   Invoices that arrive around the same time as legitimate notices and use demanding language to create a sense of urgency.

4.   Invoices that originate from a foreign address or include instructions for making payments to a foreign bank.

5.   Invoices that include fine print language like “this is not an invoice but a solicitation without an obligation to pay” or note that the continued protection of your mark is for registration in a private or proprietary database and not as part of a governmental program.

6.   Invoices that include typos, grammar or spelling mistakes, fake URL links, or any link that leads to any website other than USPTO.GOV., WIPO.INT. or EUROPA.EU.

 
Brand owners should disregard notices that do not feature the official seals of the registries in which they have filed, such as the USPTO, WIPO or EUIPO:

USPTO:

WIPO:

EUIPO:


Anyone Can Be a Target (Including Your Trademark Lawyers!)

Even our law firm has been the target of these misleading trademark solicitation efforts. Below is a deceptive invoice received by Sullivan:

This invoice attempts to appear legitimate by including a “Patent and Trademark Institute/PTMI” logo, a bar code, and trademark registration information pertaining specifically to Sullivan. Upon closer inspection, there are key details that reveal this is a misleading and unofficial solicitation:    

Five Tips for Trademark Owners

Here are five tips for dealing with an unexpected notification, solicitation or invoice relating to your trademarks:

  1. Do NOT pay it! You may feel compelled to respond immediately to these invoices with the intention of preventing unwanted action against your trademark registration or application, but with these dubious scams running unchecked, it is best to refrain from impulsive decision-making.
  2. Evaluate the notice. Does the solicitation contain any of the red flags discussed above?
  3. Contact your trademark lawyer. If you have questions about the validity of a trademark solicitation or invoice, do not hesitate to contact your trademark attorney here at Sullivan. As a general rule, for trademark prosecution and maintenance work handled by Sullivan attorneys, all legitimate government fees will be stated on our invoices.
  4. Spread the word. If you are a member of your company’s legal or marketing team, you should alert other colleagues who might receive these types of notices, especially those who work in the accounting department or are responsible for handling the payment of official notices. Feel free to share this advisory.
  5. File a complaint. You may wish to file an official complaint with government authorities or consumer protection agencies. For example, the USPTO recommends filing an online consumer complaint with the Federal Trade Commission (FTC). Though the FTC does not investigate complaints on an individual level, widespread submissions could encourage the agency to investigate and ultimately prosecute scammers for their deceptive business practices.

If you have any questions or would like to discuss this Client Alert, please feel free to contact Michael Palmisciano (212.660.3052; mpalmisciano@sullivanlaw.com) or any member of Sullivan’s Trademark Group.

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