Have you recently filed a new federal trademark application or obtained a new trademark registration? And have you since received an invoice for foreign trademark work that you don’t remember authorizing? Or an unsolicited email “warning” you that someone is trying to register your trademark as an “Internet Brand” or domain name in a foreign country? If so, beware, as these communications are most likely part of a scam.

Over the past year, more and more of our clients have reported receiving suspicious trademark-related notices. Foreign scammers, sometimes operating under the guise of official agencies, seem to be increasingly targeting U.S. companies in an attempt to extract payment, in amounts ranging from a few hundred to a few thousand dollars. Failure to identify and screen these offers and “invoices” could result in the loss of a substantial sum of money to fraud. The scams usually fall into two categories–the first involving domain names, and the second involving fraudulent invoices seeking payment for alleged foreign filing or monitoring fees. Various business watchdog groups (e.g., the Better Business Bureau) and organizations such as the United States Patent & Trademark Office (“USPTO”) and the World Intellectual Property Organization (“WIPO”) have been warning about both types of scams for a few years now. (In fact, since 2009, the USPTO has included a warning about unsolicited trademark offers with the electronic filing receipt generated in connection with each new trademark application). Nonetheless, we felt the recent uptick in activity warranted another brief discussion. In particular, our experience demonstrates that most of these scam communications arrive shortly after a new federal trademark application is filed or a new registration issues—indicating that the scammers are paying close attention to what’s going on at the USPTO.

Domain Name Scams

In the first scenario, an alleged overseas registrar or domain name official (usually, but not always, based in China) sends your company an “urgent” email message, warning that another company has made a “formal application” to register your trademark (or a confusingly similar mark) as an “Internet Brand,” “Internet Keyword,” and/or domain name, using an Asian regional or country-specific top-level domain (“TLD”), such as .cn, .hk, .tw., or .asia. The message will claim there is a clearance process before new domain names can be registered in Asia, and that your U.S. trademark rights were discovered by the supposedly well-meaning sender during this process. The message will conclude by encouraging your company to quickly respond—“within 5-7 workdays”—to secure the relevant domains yourself and protect your rights…using the sender’s services, of course!

In most instances, the senders of such emails are scam artists rather than accredited registrars. Just like in the U.S., domain names in Asia are available on a “first-come, first-served” basis, and there is no obligation on the part of any registrar to hold up one party’s application in order to check with a U.S. trademark owner. Thus the claim that your U.S. trademark rights were discovered as part of a required search is untrue – in fact, the sender of the message most likely found your company’s name by trolling the USPTO’s site. And, the threat of an interloper who is trying to steal your rights is another falsehood, meant to scare you into action. At best, these offers of registration create a false sense of urgency to convince you to do something you otherwise would not do (unless you plan on conducting extensive business in the Far East, there is probably little reason for you to go to the expense of registering your trademark as a domain name with an Asian TLD), at an inflated price. At worst, they are a complete fraud and any dollars you send to secure the phantom domain name registrations will be lost.

Fraudulent Invoices

In the second scam scenario, your company receives an official-looking “invoice” purporting to originate with an “International Trademark Registry” or an “Official International Monitoring Service.” The invoice will usually reference your U.S. trademark application or registration and include directions to pay some sum—often thousands of dollars—for “annual registration” or “annual monitoring” of your mark; the fine print will often reveal what the scammer is really offering: registration or monitoring of your mark only via its own, unofficial, “Internet database.” Many of these invoices are cleverly designed to mimic, or even counterfeit, the trade dress of legitimate and recognizable intellectual property organizations, such as WIPO. For example, one outfit operating under the name “World Intellectual Property Database” sends invoices under counterfeit letterhead (see comparison of legitimate and knockoff logos below), directing the recipients to send thousands of dollars to the Czech Republic to secure an “International Trademark.”

Click here to view the legitimate WIPO logo versus the counterfeit logo.

(NOTE: WIPO maintains a scam-tracking page with a list of current companies to watch out for, available here.)

What You Should Do

In general, beware of any entity other than your trusted regular counsel that approaches you to solicit money relating to your trademark applications or registrations. The USPTO does not offer monitoring or similar services; nor do most foreign trademark offices. While there are some legitimate services that offer trademark monitoring, none are affiliated with an official trademark governing body. Any entity that contacts you and purports to offer official monitoring services should be regarded with heavy suspicion.

Furthermore, you should review any “invoices” seeking payment for foreign registration or filing fees carefully to ensure they are legitimate. Like the USPTO, most foreign trademark offices do not send invoices after the fact; their legitimate fees are collected from your authorized counsel at the time of filing.

Finally, for ease of mind if you are interested in filing a foreign trademark application, or registering a foreign domain name, most U.S. trademark attorneys can coordinate this process for you, or else provide a referral to a reputable foreign legal services provider that is familiar with the relevant laws and regulations.