One of OWE’s core services for our clients is to file and prosecute applications for trademark registrations with the United States Patent and Trademark Office (USPTO). When we file on your behalf, we become the official correspondent of record for your application or registration. This means that we will submit all government fees on your behalf.
Almost as soon as an application is filed, the USPTO publishes application information in a publicly searchable database on its website, www.uspto.gov. Unfortunately, almost immediately after an application is filed, the applicant starts receiving scam invoices for additional fees. These may be styled as invoices for “registration” or “publication” fees, “trademark monitoring services,” or “recordation fees.” Sometimes the solicitations appear to be offering “registration” or “recordation” in foreign countries. The solicitations continue after the trademark registration is issued, when applicants receive “trademark cancellation” alerts requesting “renewal” fees. These invoices are being sent by private entities who are deliberately using names and forms to mimic official government agencies. They often use data from your trademark application, such as your Serial or Registration Number, and may refer to government agencies or codes.
Even though OWE is listed as the official correspondent, these scammers target the applicant directly. OWE sends warning notices about these scammers with correspondence about your applications. The USPTO has also posted warnings on its site, which include examples of the scam solicitations. See http://www.uspto.gov/trademarks-getting-started/non-uspto-solicitations. Nevertheless, many trademark owners targeted by these scams have paid the purported fees.
On October 9, 2015, criminal charges were finally brought against one of these scammers. Arashes Darbinyan, 35, of Glendale, California, was charged in the federal court for the Central District of California with 12 counts of mail fraud and 4 counts of aggravated identity theft for his role in one of these mass-mailing scams targeting U.S. trademark applicants.
The indictment against Mr. Darbinyan states that from September 2013 through September 2015, Darbinyan operated a trademark fees solicitation scam under the names “Trademark Clearance Center” and “Trademark Compliance Office.” Using these names, he sent official looking invoices to U.S. trademark registrants for various services, including registration, monitoring, and recordation of registrations with U.S. Customs. Darbinyan did not provide such services. Instead, he used an elaborate network of virtual business addresses in the D.C. area to receive the fees in their official looking self-addressed return envelopes, which were then forwarded back to him in San Diego, where he deposited the funds in his personal bank accounts. Darbinyan also regularly changed phone numbers, communicated via multiple fraudulent email addresses, created fraudulent websites for his “Trademark Clearance Center” and “Trademark Compliance Office,” and accessed them through proxy ISPs. He is believed to have collected $1.85 million through these scams.
We are pleased with this development. However, many other scammers are still targeting U.S. trademark owners. If you have hired OWE to file and maintain your trademark registration, you should not receive any notices or invoices soliciting trademark payments. If you get a purported invoice, please do not pay the fee (if you have any doubts, you are welcome to send the solicitation to us for evaluation). We will keep you informed of all communications with the U.S. Trademark Office or relevant foreign trademark office, and we will let you know when genuine government fees are required. If you have any questions, please call us.
Posted by Linda Joy Kattwinkel