Tuesday, March 27, 2012

Trademark Scams

If you have ever filed an application for the registration of a trademark, you know that the process takes time and there is generally not a great deal of communication with the registering agency. There are long periods of silence. Or at least that’s what we tell clients to expect. What we frequently forget to tell our clients is to expect third-party solicitations that we generally consider to be scams.
Because trademark application and registration information is public, it shouldn’t be surprising that enterprising souls have figured out ways to use such information to make money. Rarely a week goes by that we do not receive an inquiry from a client regarding a notice, bill, or other communication relating to trademark services that did not come from GPM. 
The most common of these (often received within a few months after filing a U.S. application) is an email communication from a party somewhere in Asia claiming to be an official registrar or auditor of domain names. The notice states that a particular company (name given) is proposing to register a trade name or “Net brand” (or other vague reference to a trademark right) and a number of domain names that include the recipient’s trademark. This party sending the email claims a duty to determine if you have authorized such registrations or if you want to file a dissent application or take some other form of action to challenge the alleged applications. Although the sender provides a name, telephone number, and company name and address (generally real), I have yet to find any information about any of the companies named in one of these emails, which makes me think they probably don’t exist, and if they do, they are unlikely either to be interested in registering the identified domain names or to pose much of a threat if they do.  
Communications from official sounding organizations such as the “US Trademark Registration Office” appear as formal notices for watch or other administrative services, or recommended actions such as recording a trademark with U.S. Customs and Border Protection. Many appear as invoices for recording or service fees, although small print somewhere in the document will state that this is not a bill. These notices typically include nothing more than a post office box for communication. In one case, a client received a notice from an organization claiming that payment was due under “their contract” for the annual renewal of subscription watch services. The notice was directed to “Accounting” and small enough (a couple of hundred dollars) to possibly avoid scrutiny. Surprisingly, there was a telephone number which I called to request a copy of the contract. I spoke to an answering machine andno surprise herewe never received a copy of the contract or any further invoices.
Technically, many of these “scams” offer legitimate services. But when they use deceptive or misleading tactics to solicit business, you have to wonder what else is up. In some cases, the sole purpose may be to sell real but unnecessary services (registrations for every top level domain and brand variation imaginable, U.S. Customs registration, etc.) at inflated prices. More likely, however, the solicitor has no intention of providing any services and is instead seeking “free” money and/or credit card or other financial information that is then used illegally for other purposes. In the case of the Asian domain name scam, a response from the trademark owner indicating concern may be the trigger for the solicitor (acting under the name of the company identified in the letter) to actually register the names and then offer them to you at a highly inflated fee.
So what should you do if you receive one of these letters? If you have filed your application(s) through an attorney, all official communications from the relevant government agencyU.S. or foreignwill come through that attorney. If you have filed directly, official communications will come only from the official agency; if you aren’t sure about the name, look it up in your papers or online. If still in doubt, or just curious, contact your attorney. Organizations such as INTA (International Trademark Association) and AIPLA (American Intellectual Property Law Association) have information about current and ongoing scams, and the USPTO (United States Patent and Trademark Office), WIPO (World Intellectual Property Organization), and the government agencies responsible for intellectual property registrations in most countries include online access to warnings about deceptive and misleading solicitations.

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