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April 21, 2014

Be Aware of Trademark and Patent Scams

With alarming frequency, particularly in recent months, clients have asked us to evaluate official-looking notices that claim to originate from governmental trademark and/or patent offices and legitimate vendors, alleging that the client must pay fees in order to maintain their trademark and patent rights in various jurisdictions.  In almost all of these cases, these notices are actually rather sophisticated scams or (at best) solicitations, seeking the payment of fees for unnecessary services. 

Because the trademark records of the U.S. Patent and Trademark Office are available online, and easily accessed by the public, owners of U.S. trademarks registrations and applications seem to be most often targeted in these scams.  This Client Alert seeks to increase awareness of such scams – so that clients can recognize them the next time they cross their desks.

Domain Name Scams

The first type of scam involves an email originating from a domain name registrar or IT consulting company based in China that purports to notify a trademark holder that another entity is seeking to register the client’s trademark or business name as a domain name in China, Hong Kong, Taiwan, or Asia (e.g., clientbrand.cn,clientbrand.hk, clientbrand.tw, etc.).  The email gives the brand owner a short period in time in which to secure the domain name for their own.  These notifications are essentially solicitations.  If the client is interested in registering the mark at issue in the subject country, we recommend that the client simply go through their normal trademark or domain name counsel to see if they are eligible to register a domain name with a certain country code.  Moreover, in the event there really is a third-party who is seeking to register your brand name for nefarious purposes, there are channels available for addressing such uses if and when they materialize.

Trademark and Patent Services Scams

The second type of scam involves official looking documents mailed from an entity with a faux government sounding name.  On the trademark side, we have seen notices from organizations such as the “United States Trademark Agency” or the “Trademark Monitoring Service.”  These notices often offer to monitor the progress of your trademark application, provide third party watch services, renew a registration or provide another service relating to obtaining or maintaining a registration, or record your mark with some sort of trademark “registry” or corporate names/marks database  for a fee.  These notices are not from the United States Patent and Trademark Office (“PTO”).  The PTO will not solicit fees from applicants, other than when a specific service is utilized.  Such fraudulent communications are also commonly received in connection with pending European Community trademark offices.  

On the patent side, our clients have reported receiving notices from the “Patent & Trademark Office Register of Patents,” that are essentially invoices requesting payment of a “filing fee” (often of several thousand dollars) to a bank located abroad.  These notices contain an officiallooking government seal, and include an official-looking illustration of the client’s patent.  They are similarly fraudulent and not connected to any legitimate governmental agency.

Similarly, we have seen a recent uptick in the number of notifications sent from trademark service companies that seek to provide prosecution services relating to pending trademark applications.  These notifications often contain alarming language about upcoming deadlines, and sometimes quote a (high) fee for handling the deadline on the client’s behalf. 

Keep in mind that rarely will any patent or trademark office communicate directly with a client if there is counsel of record in the particular patent or trademark matter.  In an abundance of caution, we suggest that clients promptly forward any such notices to intellectual property counsel – particularly before paying any requested fees.

© 2014 Sterne Kessler

About the Author

Monica Riva Talley, Trademark Attorney, Sterne Kessler, Law Firm
Director

Monica Talley brings more than 17 years of experience protecting some of the world's most recognizable brands to her role as a Director in the firm’s Trademark practice.  Ms. Talley specializes in strategic trademark counseling and portfolio management, developing anti-counterfeiting solutions and strategies, and trademark enforcement. 

Ranked as one of the leading trademark prosecution and strategy attorneys in Washington, DC, Ms. Talley is particularly noted for her global brand protection and commercialization strategies, and is lauded by clients for utilizing...

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