Fraudulent Solicitations and Scams
Many trademark owners have (and will undoubtedly) continue to receive official-looking email and letters from official-sounding organizations asking for money to be included in a trademark registry, or to register or authorize a trademark registration in a particular country (such as China), or to receive trademark “watch” or other protection services. THESE SOLICITATIONS ARE SCAMS. DO NOT RESPOND TO THEM. (If you’re interested in seeing some examples of these scams, click on the links provided further below.)
The scammers obtain information about your trademarks from the various legitimate trademark databases and then send solicitations and offers, sometimes mimicking government entities. Our office provides the services you need to register, maintain and protect your trademark. If you have hired us to apply for, register, and maintain your trademark, all such solicitations and offers from third parties regarding your trademark should be DISCARDED. (You can also file a complaint with the FTC at www.FTC.gov if you are so inclined.)
The United States Patent and Trademark Office (“USPTO”) has been sending out warning notices about these scams (click here to see the USPTO Warning Notice), advising that “private companies not associated with the USPTO often use trademark application and registration information from the USPTO’s databases to mail or e-mail trademark-related solicitations.” The Department of Justice announced that two California men pled guilty in a mass-mailing scam that targeted owners of U.S. trademark applications who admitted to stealing approximately $1.66 million through companies called Trademark Compliance Center (TCC) and Trademark Compliance Office (TCO). See also, USPTO Director announcement Federal Agencies Tackling Trademark Scams. More recently, the USPTO has sent out an email for people to Beware of email scams. Many of these companies will falsely advise that your Trademark is about to expire if you do not take action. You can always check the status of your trademark at the USPTO status inquiry and be sure to click the “Maintenance” tab to see the next due dates.
Recently a federal judge sentenced an individual to 4 years in prison and restitution of more than $4.5million dollars that scammed more than 2,900 trademark owners with these fraudulent solicitations. See Law360 and JDSupra.
A note about solicitations for trademark “watch” or monitoring services. Some companies prey on trademark owners by attempting to scare them into forking over money to monitor activity regarding their trademarks in the USPTO. One such scammer offers to monitor your “trademark status” in the USPTO daily, via computer, for the “discounted” price of $318.75. Such a limited-service is basically useless. For our clients (for whom we are listed as attorney of record in the USPTO), we are designated by the USPTO to be notified automatically in the event of anything involving our clients’ trademarks. Where watch services can be useful is in monitoring the filing of applications by third parties for potentially confusingly similar trademarks, but the scammers don’t offer that and aren’t capable of it. If you’re interested in a watch service, please let us know as we can arrange it for you with a reputable company.
The following are just some of the scam solicitations received by our clients. DO NOT RESPOND to or engage these companies:
United States Trademark Maintenance Service
Patent and Trademark Agency (2 Versions)
Attorneys with Nothing Better to Do
Then there are the law firms that try and mine the USPTO database to drum up business because they apparently do not have enough business. See for example:
Domain Name Scams
There are many “trolls” out there looking for business. Some of them claim they will register your trademark as a domain name or keyword in foreign countries in order to protect you or eliminate consumer confusion over your mark and that of another. The basic rule is that every business should, as early as possible, register as many domains as it can that are related to its business and the trademarks it uses, including .co, .net, .info, .org, .me, .mobi, .us, .ca, if available. All the alternative domain names should then be pointed to your primary domain. It is infinitely less expensive to register variations on your domain name and trademarks upfront than dealing with an infringement situation in the future.
There are also international domains and country-code suffixes. However, in order to get a domain name in many countries, you have to have a bona fide business establishment or physical presence within the country. Our typical recommendation for clients doing business internationally is to focus on the countries that you do business in, and the countries where products are made or services are delivered/rendered. This is often a good starting point.
In February 2017, EUIPO convened a meeting to discuss best practices to prevent fraud. You can read more about this effort here.