Today, we have a public service announcement in hopes you don't fall victim to this ever-growing problem. If you have filed a federal trademark application or own a trademark registration with the U.S. Patent and Trademark Office (USPTO), you are probably going to receive—if you haven't already—fake or misleading invoices. These scams are on the rise. Several of our clients have reported receiving these misleading invoices. They are often very convincing and look like they come from official government offices and they reference your particular trademark registration number and mark. DON'T BE FOOLED. The USPTO does NOT issue any invoices to trademark owners.
These private companies are generating the official-looking invoices based on the owner name and address shown on the USPTO records for trademark registrations and applications. These invoices usually purport to come from companies that use names that appear to be government offices. For example, some have come from U.S. Trademark Compliance Office or the Patent and Trademark Bureau. The USPTO maintains a copies of fake invoices that people have reported receiving. Click here if you would like to see some examples.
The invoices sometimes claim they are renewal fees or registration fees that place your mark in a useless database. Some may offer private services like monitoring or customs recordations. You are not required to use any of these private services. The invoices may contain tiny, fine print that explains what they are actually doing and that they are not part of the USPTO, but this is often overlooked.
Because the invoices look official, they are being routed to accounting departments who may not know about this issue. Make sure to discuss this important issue with your accounting staff and anyone else who may be responsible for receiving or paying invoices to make sure no one pays these scam invoices.
In some cases, people are misled and pay the invoices thinking they are paying renewal fees or other maintenance fees that are due to the USPTO. This can have dire consequences. If you fail to file the required renewal and maintenance filings with the USPTO and pay these private companies instead, your trademark registration could be cancelled.
The USPTO is making strides to educate people about these misleading invoices. They enclose information about these fake invoices with registration certificates and have additional information on their website to help people better understand the difference including a short video.
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.