Trademark “Scams” – Fraudulent Trademark Notices For Renewals, Monitoring Services and Registries
By Justin M. Jacobson, Esq.
In recent years, there has been an increase in the creation of official “sounding” entities sending out authoritative “looking” communications to listed trademark owners. There are a variety of notices sent out to owners at their listed addresses and some include the offering of a “trademark monitoring” or “private registry” service. They also offer to record a trademark with a directory, U.S. Customs and Border Protection or to assist in complying with an upcoming filing deadline (i.e., a trademark renewal) or with a response to an outstanding Office Action Letter. The notices are usually sent from an official “sounding” company name incorporating “terms like ‘United States,’ ‘U.S.,’ ‘Trademark,’ ‘Patent,’ ‘Registration,’ ‘Office,’ or ‘Agency,’” together with an offer of services and a request for money. This is because a trademark owner’s contact information, including the individual or corporate name and address are a matter of public record, and are listed on the United States Patent and Trademark Office (U.S.P.T.O.) database for anybody to access.
In response to these trademark letters, the U.S.P.T.O. began issuing public warnings to bring these wide-spread practices to the public’s attention. In fact, while these solicitations may often contain correct information (for example, that a filing is due to keep a registration active); a trademark owner is never required to use the services offered by these companies. In some instances, these services are extremely costly and also often may not even provide the competent service that a reputable attorney or other professional may.
A registrant should review the provided notice for irregularities to determine its authenticity. This could include looking for any typos, spelling or grammatical errors as well as calling an entity something that does not exist. Some of these notices may actually state that they are not “affiliated or endorsed by the U.S. government” in the fine print at the bottom, so a careful read may alert the recipient to the fraudulent nature of the communication.
Consequently, the U.S.P.T.O. mentions that there is no avenue available for obtaining a refund from a private company if a trademark owner pays for such services. That is because often there is nothing inherently illegal in their practices. A trademark owner should be aware of this prior to paying any of these companies. However, if the company is engaging in some type of fraudulent business practices, there is a possibility of making a claim with the Federal Trade Commission (FTC) to acquire their assistance.
Further, the U.S.P.T.O. maintains a list of a variety of companies whose scamming activities are known as well as provides copies of some of their notices for review. In fact, such payment scams are not simply an American problem, as the World Intellectual Property Organization (W.I.P.O.) also has provided warnings about similar scams as well as compiled a list of some known services containing copies of their notice documents for review.
Overall, this has become a serious global problem for trademark owners who may be unfamiliar with the formalities associated with trademark filings and a mark’s maintenance or prosecution. In many instances, especially in the cases where an individual files an application on their own or uses a trademark registration service, such as LegalZoom, the owner may not know anything about such potential scams and may end up paying substantial sums for an unneeded service or paying much more than is customarily received for the same work.
This article is not intended as legal advice, as an attorney and/or another professional specializing in the field should be consulted.
© 2018 The Jacobson Firm, P.C.