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Avoiding Trademark Scams and Solicitations

There is no shortage of attempted fraud on trademark applicants and the U.S. Patent & Trademark Office (“USPTO”). We frequently hear from clients about official-looking correspondence from entities with names like “Patent & Trademark Bureau” or “World Trademark Register” that look like renewal reminders or notices to register your trademark with an international registry. These notices are designed to mislead trademark owners into believing that their trademark registration is dangerously close to expiration; to suggest that their registration is not yet complete; or to solicit a useless publication service. The ultimate goal of these notices is to extract hundreds or thousands of dollars from unsuspecting trademark registrants using publicly available information. Here is a redacted example of a scam notice recently received by a client:  Scam Trademark Renewal Notice

This example shows a fake renewal reminder notice. These renewal notices are often sent a year or more before a clients’ first opportunity to renew, likely hoping to catch you before we send our maintenance reminders. The redacted example purposely misstates the client’s registration and renewal dates by one year.  Because renewal occurs years after registration, it’s easy to forget when the registration issued and to simply trust the notice.

Other schemes we come across are solicitations to “register” your mark with a private brand registry. Private brand registries may avoid liability for fraud by generating and maintaining their own databases, actually conferring the promised service. But, like the star naming services advertised on day-time television, these registries are unofficial, conferring no rights and offering no benefits.  The rights and benefits conferred by registration with the USPTO and equivalent offices abroad is all that is required.

Tips for Avoiding Scams

As your attorneys, we are listed as the primary point of contact for official correspondence. Rarely will correspondence about your trademark application or registration be legitimate if it is not from us.

As always, some exceptions apply. As an example, the Canadian Intellectual Property Office (“CIPO”) recently changed its rules and no longer corresponds with foreign attorneys, only trademark applicants or their appointed Canadian counsel. Because of that change in policy, clients with Canadian applications have been receiving notices directly from CIPO.  If you are uncertain or concerned about a notice you receive, please contact us.

The USPTO has been addressing these and other sources of scams and fraud. For additional information and tips, the Trademark Office has posted a wealth of information on its website here.

Contributed by Spencer Owen

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