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Trademark scams- Be careful!

Once you have filed an application to register your trademark (TM) with the USPTO, you might start to receive some unusual letters and emails.  Unfortunately, the world being what it is, having your information on the USPTO website as a Trademark applicant (or owner of a registered TM) may lead to many opportunities to be scammed coming your way.

Here are the big three, in my experience:

  1. The Registration scam: This one preys especially egregiously on the presumed lack of knowledge of new trademark applicants or owners of new registrations. It arrives in the form of a letter, via USPS. Its appearance is that of an official government correspondence. It usually will include some paragraphs in small font size which may include legal jargon, but somewhere on the page will be the pitch: You can register your mark in their registry for anot insignificant sum of money, between one and two thousand dollars. If you read carefully, you will see that the “registry” where your TM will appear is just a book they publish every year or maybe a registry published online. It is not a government sanctioned register of trademarks, and it confers absolutely no legal benefit on those who have paid to have their TM included. These offers of “registration” often originate in Europe.
  2. The Renewal scam: This one is somewhat less obvious, and doesn’t usually try to gauge its targets for as much money as the registration scam discussed above. The renewal scam also arrives via post, and always will be printed to appear as official correspondence, in the form of a notification that YOUR TRADEMARK REGISTRATION IS GOING TO BE CANCELLED or other similar alarmist language. But the information printed on the notification is wrong.  It will often have an incorrect registration date for your TM, and therefore an incorrect date when maintenance filings must be submitted to the USPTO. These dates are often one year too early.  Thus, if you bite, you will send your money to these people, who will have gotten it by misinforming you about the date your trademark maintenance filing is due. By doing so they can rope you in before you receive other offers to assist with maintaining your TM registration, some of which may come from attorneys who will treat you fairly and do a good job. Whether the folks who send out these one-year-too-early-YOUR-MARK-IS ABOUT-TO BE CANCELLED solicitations can properly submit your maintenance filing is an entirely different question, but dishonesty (or to be extremely charitable, carelessness) in their initial communication with you is certainly a red flag.
  3. The domain scam: This is my particular favorite, since I reliably get a few inquiries each month from clients who are puzzled about it. The domain scam arrives in an email, usually ostensibly from China (but who knows). The gist of it is that someone in China has applied to register your trademark as a domain name. The sender of the email says that they are a domain registry and are reaching out to you to make sure you do not object to your TM being registered as a domain name. If you do not object, they will go ahead and issue the domain name registration. But if you notify them ASAP, you can prevent the issuance of your trademark as a domain name. This one just smells bad because no domain registry searches TM registers and then contacts trademark owners to see if they would like to object to registration of a domain name. One anticipates that if you reply to the email and indicate you object to registration of your TM as a domain name, a fee will be quoted for your consideration.

The moral of the story is, as ever, look before you leap. If you receive any correspondence about your trademark and it’s geared towards you having to pay money, confer with your trusted TM attorney before taking any action.

Rule #1

Always consult with your trademark attorney before making any changes to the way you use the trademark.

Monitor Your Trademark

Call (914) 723-0394

Thomas M. Wilentz is a published writer on intellectual property law who has been practicing trademark law for 18 years. His firm, Thomas M. Wilentz Attorney at Law, PLLC, was founded in 2003 and since then has helped clients from all over the USA, as well as from Canada, China, the UK, Australia, Malaysia, Mexico, Singapore and many other countries.