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CRYSTAL BROUGHAN, ESQ | Intellectual Property Trademark Scams
This year I went through the pro- cess of ling trademark applica- tions for my law rm’s trade- marks. Soon a er I led the applica- tions, I started receiving all kinds of scam mail from companies claiming to publish international catalogues of trademarks and provide global trade- mark protection. I realized that all of my clients are receiving these scam mailings every time a new trademark application is led with the United States Patent and Trademark O ce.
So below is a list of scam mail that business owners have received and brought to my attention:
WTMR Catalogue 2018 (World Trademark Register) from Washing- ton, D.C. ese people claim there is a due date to pay a “registration fee of $980. ere is a warning bur- ied in the verbiage stating, “THIS IS NOT A BILL. THIS IS A SOLICITA- TION. YOU ARE UNDER NO OB- LIGATION TO PAY THE AMOUNT STATED ABOVE, UNLESS YOU ACCEPT THIS OFFER.”
TM-Edition International Cata- logue of Trademarks -2018 from Hungary demands $2450 for registra- tion costs and they only accept pay- ment via a bank transfer. No checks accepted.
GloTrade s.r.o. Global Trademarks Protection from New York. ese people want $2890. is solicitation letter also states in very small writ- ing “ is o er is not an invoice but a solicitation without obligation to pay, unless our o er is accepted.”
Trademark Edition International Catalogue of Trademarks 2018 from Hungary demands $2050. No checks accepted. Payment only via bank transfer.
U.S. Trademark Compliance Of- ce from Wilimington, Delaware demands $495 to le with the US Customs and Border Protection but at the very bottom is very ne print it
states, “We are not a liated with the United States Patent and Trademark O ce(USPTO) and U.S. Customs and Border Protection (CBP) o ce.”
Patent and Trademark Bureau in Philadelphia, PA. ey reminded the trademark owner that the trademark was going to expire if the owner did not renew the trademark and wanted a $925 ling fee plus an additional $325 fee for each additional class of registration.
If you or a client receives any mail from these entities you should imme- diately throw them away. ey do not provide any legitimate service that will bene t your trademark registra- tions or your business. e United States Patent and Trademark O ce sends warnings with all of their Cer- ti cates of Registration that state: Be- ware of potentially misleading o ers and notices.
All o cial correspondence about your registration will be from the “United States Patent and Trademark O ce” in Alexandria, VA, and, if by email, from the domain “@uspto.gov.” Our email reminders will direct you to make the necessary lings and pay the associated fees online through TEAS and will not request any fees by mail.
Private companies not associated withtheUSPTOo enusetrademark application and registration infor- mation from our databases to mail or email trademark-related o ers and notices. ese o ers and notices may include legal services, trademark monitoring services, recording trade- marks with U.S. Customs and Border Protection, and “registering” trade- marks in a private registry. Most com- panies require “fees” to be paid.
ese companies may have names similar to the USPTO. eir names mayincludetheterms“UnitedStates,” “U.S.,” “Trademark,” “Patent,” “Regis- tration,” “O ce,” or “Agency.” Some
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companies attempt to make their of- fers and notices look like o cial gov- ernment documents by using o cial government data publicly available from USPTO records.
SOME TIPS ON HOW TO IDENTIFY A TRADEMARK SCAM:
• Is the mail from a foreign country? • Read the ne print does it state “this is not an invoice but a solicita-
tion without an obligation to pay”? • Does the mailing claim to be from or for an international publication? • Are they claiming that there is an upcoming ling deadline and of- fering to provide a ling service for
a fee?
• Is the mailing from someone other
than the United States Patent and Trademark O ce in Alexandria, Virginia?
I recommend you take a look at the USPTO website that lists the names of companies that scam trademark owners at www.uspto.gov/trademarks- getting-started/caution-misleading- notices. ere is also a video on that webpage that o ers great information on these types of scams and how to avoid them.
Scams are a good reason to have trademarks applications led and managed by an experienced trademark lawyer who can screen out these types offraudulentmailings.O en,Ireceive phone calls and/or emails from clients who have received questionable mail- ings relating to their trademark appli- cations or registrations. I review the mailing and advise the client on the validity of the mailing. Usually the cli- ent claims they thought it was a scam but they wanted to make sure before they sent in payment. I wonder how many trademark
owners fall for these scams and send in a payment. Don’t get caught in the scam web! Be careful!
Marks Gray P.A. shareholder Crystal Broughan’s practice focuses primarily on intellectual property matters such as trademarks, trade secrets, copyright infringement cases and domain name disputes. She prepares and les trade- mark and copyright applications, licensing agreements, non-compete and non-disclosure agreements for a wide variety of clients. In addition, she represents clients before the Trademark Trials and Appeals Board on trademark disputes and the World Intellectual Property Organization on domain name disputes. She can be reached at (904) 807-2180 or marksgray.com.
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