|If you own a trademark application or registration, you will eventually receive solicitations from private companies not associated with the United States Patent and Trademark Office (USPTO) or from our office, if we are your attorney of record. |
Often these look like official government documents, emphasizing data such as the trademark application serial number, the registration number, the International Classes, filing dates, and other information publicly available from USPTO records, including your, or your company’s, name and e-mail or mailing address. Here are the two most popular scams.
The Fraudulent Trademark Invoice Scam The most common trademark scam is the fraudulent invoice scam. The scammers send invoices to trademark owners indicating that some action must be undertaken in connection with the owner’s applications or registrations, such as “publication,” “registration,” “renewal,” or “recordation,” or even “fix your trademark” if there is an outstanding office action on your application. Often threatening language is included to say that if payment is not received by a certain date, the trademark owner’s rights will be adversely affected. The invoices are usually for payments from $500 to $3000. Many trademark owners pay these fraudulent invoices because they look authentic, with official sounding names, such as the “United States Trademark Maintenance Service,” the “Patent and Trademark Organization,” and the “Trademark Office, Ltd.”
However, paying them will not benefit the trademark owner in any way, and since most scammers are located abroad, there is no way to contact or take action against them. One scammer, operating under the names “Trademark Clearance Center” and “Trademark Compliance Office,” was recently prosecuted. However, this is the first time a trademark scammer has ever been prosecuted, and while the scammer was in business, he is believed to have collected $1.85 million over a two-year span. Clearly, thousands of trademark owners have been duped into paying.
As a general rule, do not pay any trademark invoices from unknown sources, no matter how authentic they may seem. All official correspondence relating to U.S. trademark applications and registrations will be from the “United States Patent and Trademark Office” in Alexandria, Virginia, and if by e-mail, from the domain “@uspto.gov.” Such correspondence will be delivered directly to the trademark owner (if no attorney is of record) or to the trademark owner’s attorney. But the USPTO will never send a trademark owner an invoice. UPTO fees are usually due when documents are filed, and if additional payment is ever required, the trademark owner or the owner’s attorney will be notified through a UPTO “Office Action,” not an invoice. In summary, any request for payment that does not come from the UPTO or the trademark owner’s attorney is, by definition, fraudulent.
The Foreign Domain Name Registrar Scam This scam involves e-mails from foreign domain name registrars (foreign companies authorized to register country-code top-level domains, such as .cn for China) or companies purporting to be foreign name registrars, alerting trademark owners that foreign companies are seeking to register domain names incorporating the owner’s trademarks. The e-mails typically indicate that the registrars are aware of the trademark owners’ rights, that they have placed the domain names on hold to give the owners an opportunity to register the names, and that, if the owners fail to act, the domains will be registered to the foreign company. Many trademark owners have been tricked by this scam, especially when the e-mails are from registrars who operate authentic-looking websites.
Sometimes the scammers register the foreign domain names, and sometimes they disappear after receiving payment. However, even when trademark owners acquire the names, they are usually purchased at inflated prices, and unnecessary, since no one is really attempting to register the foreign domain name. Of course, trademark owners should register such names if doing so makes commercial sense, but not as a result of this scam.
The best defense against this scam is simply to ignore all e-mails from unknown sources containing warnings about the registration of foreign domain names, no matter how authentic the e-mails or the senders seem. Domain name registrars do not research whether anyone has prior rights in a domain name, and there is no procedure for placing holds on domain name registrations.
As in the United States, foreign domain names are registered on a first come, first served basis. Further, most domain name disputes can only be resolved through the arbitration procedures described in the domain name registration agreements. Another sign that the emails are fakes is that the cost of the foreign domain names is much higher than the normal domain name price of about $10-$20 and the e-mails usually contain generic salutations, such as “Dear Sirs,” and tend to be poorly written.
Questions About Scams
The fraudulent invoice and foreign registrar scams are the most common trademark and domain name scams, but there are others. If you have any question about whether a particular invoice or e-mail is a scam, please contact us or another attorney before taking any action or making any payment.
We, when we enforce your trademark and represent you, will be aware and act on any scams on your behalf.