Arnstein & Lehr's Intellectual Property Group Authors Alert on Common IP-Related Scams
September 22, 2015
You have hired an attorney to file a patent or trademark application or to maintain a patent or trademark registration and have received invoices for those services from your attorney. However, as your application moves through the U.S. Patent and Trademark Office system or your registration approaches a maintenance date, you begin to receive invoices that appear to be official correspondence directly from the USPTO or World Intellectual Property Organization. However, if you read them closely, you will see that they are from private companies that are not associated with the USPTO or WIPO. These companies may have names containing “United States,” “International,” “World,” “Trademark,” “Patent,” “Registration,” “Office,” “Agency,” or other official sounding words. They may solicit you for legal services, trademark monitoring services, recording trademarks with U.S. Customs and Border Protection, publication of patents and trademarks in an international registry, and other such tasks that are not required to obtain or maintain your intellectual property. The notices may come from U.S. or foreign addresses. A number of the foreign addresses are in the Czech Republic, Slovak Republic, and Hungary.
So many applicants and registrants have mistakenly paid what that thought were official fees to the USPTO or WIPO that they have both issued formal warnings to owners of intellectual property. See the USPTO warning at http://www.uspto.gov/trademark-getting-started-non-uspto-solicitations and the WIPO warnings at http://www.wipo.int/pct/en/warning/pct_warning.html and http://www.wipo.int/madrid/en/fees/warning.html.
These solicitations are increasingly designed to mimic the look of official government documents, containing serial or registration numbers, International Classes, filing and registration dates, and other publicly available information. They often contain warnings that a trademark is about to be cancelled or will expire unless “fees” are paid, with an incorrect cancellation or expiration date that appears to make the matter urgent. Both the USPTO and WIPO warnings contain lists of companies that send such solicitations and examples of what their communications look like.
If you are represented by an attorney, the USPTO and WIPO will only correspond with your attorney, not directly with you. Check with your attorney if you are unsure about the legitimacy of correspondence concerning your patent or trademark. In most cases, the correspondence will be from one of these private companies that solicit patent and trademark owners.
A variation of these solicitations is related to domain names and arrives by e-mail from what appear to be Asian domain name registrars, often from Hong Kong or China. The messages say that a third party has applied to register a domain name containing your trademark and that the registrar wants to check whether you authorized that purchase. They will try to sell you Asian domain names you do not need at inflated prices to “keep them out of the hands of unscrupulous third parties.” Do not respond to these messages or open any attachments. These companies will sell live e-mail addresses to others of their kind and you will be bombarded with solicitations. There is no end to the number of variations of Asian domain names containing your trademark that will be offered to you. See http://www.keepalert.fr/slamming-scam-register-asian-domain-names for a lengthy list of these companies and a sample solicitation.
This alert provides information on current legal issues. The information should not be construed as legal advice or opinion in particular situations or applications. © 2015 Arnstein & Lehr LLP. All rights reserved.
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