United States: Be On The Lookout For Trademark Registration Scammers

Last Updated: November 6 2018
Article by John W. Scruton

The world is full of people trying to take your money, and the trademark world is no different. When your trademark is registered with the U.S. Patent and Trademark Office, you join the ranks of those who may be the target of scam renewal notices. When you receive a notice about your registration, be sure that you know who it is from and what it is offering before you act on it.

The idea of confusion is central to trademark law: a later mark will be infringing if it is likely to cause confusion about whether it is the same as, or related to, a prior mark. It is fitting, then, that this common scam perpetrated on trademark owners looks to extract money from them after creating confusion about who the scammer is and what the trademark owner is paying for.

The scam starts with the public record. Every trademark is entered in a database maintained by the registrar. In the U.S., that is the U.S. Patent and Trademark Office’s trademark database, which is accessible to the public through the internet. Scammers search that database to find targets, and download information about registered trademarks to include in their notices. (This practice is not limited to U.S. trademark owners, as other countries’ intellectual property offices typically make their trademark ownership records available through similar internet-accessible databases.)

Every trademark registration requires periodic filings to maintain the registration’s validity. In the U.S., the owner must file proof that it is still using the mark between the 5th and 6th anniversaries of the registration date, then must file similar proof when it comes time to renew the registration between the 9th and 10th anniversary of the registration and every 10 years thereafter. Each of those filings carries a filing fee. Most trademark owners are generally aware that some later filing is required at some point, even if they are not sure about the particulars.

Taking advantage of that general awareness, the scammers send a notice to the trademark owner asking for money, or asking the owner to sign up for their “service” for which they will send an invoice later. Those notices may take any of various forms, but they typically involve (1) an official-sounding name that is close enough to “the U.S. Patent and Trademark Office” to seem like it might be the agency that registers trademarks, (2) a notice that looks very official, as if it might have come from a government agency, and (3) an offer to do something that seems close enough to maintaining or renewing the registration that the recipient might be confused into thinking they have to pay the amount listed.

For example, a client recently received this notice from the “Patent and Trademark Bureau” located on Park Avenue in Manhattan, asking the recipient to sign and return the notice shown below, which purports to “automatically empower Patent and Trademark Bureau to renew the trademark stated above on your behalf” for a substantial fee. The notice does not ask for the type of information or documentation that would be required to process a legitimate renewal. There is no suggestion that the “Bureau” is a law firm, and it is not clear exactly what, if anything, it would do for those who sign up. The misleading name “Patent and Trademark Bureau,” though, does not inspire confidence that everything would be on the up and up.

Another client received a different type of notice, this from Hungary (where the mark is not registered).  This is another familiar form of notice, in which the offer is to list your mark in some list or registry of trademarks for a substantial fee (in the case of this notice, US$2,450).  It is unclear what these “registries” are, but they are not the official registry of any country or the European Union.  Essentially the offer is for the trademark owner to pay thousands of dollars so that the mark may be listed on a list that nobody will use.  

These are by no means exhaustive of the type of bogus notices that a trademark owner might receive, but the basic forms are fairly common. The U.S. Patent and Trademark Office has a list of companies sending out what it calls “misleading notices,” with links to images of the notices.

So be on the lookout. If you receive a notice about some action you need to take to keep your trademark registration and you’re not sure if it’s genuine, please contact us and we’ll have a look. If we handled the registration and the notice is not from us, it’s almost certainly not something you need to respond to. And it’s not a bad idea to alert whoever pays the bills to be on the lookout too, because these notices often look enough like a bill that they get forwarded directly to accounts payable.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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John W. Scruton
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