Don’t Be Duped By Trademark Scams
Trademark scams is a problem that has been steadily increasing over the past few years. If you receive correspondence about your trademarks from someone other than your trademark attorney—correspondence that looks like an invoice or an offer for trademark services—it may not be legitimate.
With technological advancements, it is now easier for opportunists to search public trademark databases and extract relevant information, including owner name and contact information, for their commercial gain. Companies are extracting information from public database records and using it to send communications directly to trademark owners. Often these scams appear as official-looking documents that look a lot less like junk mail and more like invoices or official government agency correspondence. Examples of such scams appear below:
The most common trademark scams we see impersonate official correspondence. For example, some correspondence will very closely resemble communications issued by the United States Patent and Trademark Office (“USPTO”). The correspondence typically either requests a fee for publication of the mark in various “registers,” or indicates that there are third party applications or registrations in their country that may affect your registration. An example of a fake USPTO email is included below:
Some scammers utilize advanced technology that allows them to search public records for when an official fee payment is due, and send out an official-looking invoice requesting payment of such fees around the due date. These scams appear more credible since the trademark owner is expecting to have to pay a filing or renewal fee around the time of receipt. Often times these scams will include fine print reading “this is not an invoice” or something similar.
In 2017, the USPTO announced its cooperation in a Department of Justice investigation into a trademark scam perpetrated by two California men who defrauded over 4,000 people of $1.66 million. These individuals admitted to running their scam through companies called “Trademark Compliance Center” and “Trademark Compliance Office.” In exchange for a fee of $385, these companies promised to monitor and report newly filed marks that possibly infringe their customer’s mark, and also to record the customer’s trademark registration with U.S. Customs and Border Protection. These businesses never actually performed the monitoring services for their customers nor did they record any registrations with customs authorities, but they did pocket the fees. This scam involved using the identities of other people to open virtual offices in the Washington, D.C. area and to open bank accounts for purposes of laundering the scam proceeds.
This is by no means a comprehensive list of all of the trademark scams going around, but they are some of the most common trademark scams. Be advised that not every official-looking document is what it appears to be, and carefully review each and every piece of seemingly official correspondence. A good rule of thumb—all legitimate USPTO correspondence regarding your trademark application(s) or registration(s) will be from the “United States Patent and Trademark Office” in Alexandria, Virginia, or, if sent by email, from an address ending in “@uspto.gov,” and the correspondence will be sent directly to your attorney of record. If you have any questions regarding the validity of a trademark correspondence, please do not hesitate to contact your attorney of record or the firm.
Grayson J. Derrick
Chair, Technology and Intellectual Property Section