Scam trademark notifications have been a nuisance to brand owners for years, but in recent weeks the volume of such notices has increased dramatically.
Companies and business owners should beware of notices they receive that claim to originate from official trademark offices and vendors because these notices may be illegitimate. Significantly, trademark registrations are of public record. Unscrupulous companies prey on trademark (and patent) registrants by using information from actual registrations in an attempt to deceive registrants into paying for unneeded services or for services performed for free by the United States Patent and Trademark Office (USPTO) or counterpart agencies in other countries.
Some common scams include:
- Offers to “list” a trademark in a U.S. or worldwide registration directory, or invoices for such listings. These directories have no legal effect, other than to provide a convenient list to scammers of a potentially vulnerable company. Click here to view examples of such offers.Example 3.pdf
- Claims that a third party has attempted to register a domain name or keyword that contains the brand owner’s mark, along with an invitation to the brand owner to register the domain or keyword itself. This scam often, but not always, involves .cn domains in China. Legitimate registrars do not send such e-mails to brand owners. In any event, if you do not do business in the relevant jurisdiction and would not otherwise have been interested in the domain, there is no reason to register it. If you do wish to register the domain, intellectual property counsel can assist you in locating a legitimate registrar. Click here to view an example of such offers.
- Trademark renewal offers. The scammer advises (truthfully) that a trademark registration will soon be expiring and requests payment of several hundred dollars. In return, the scammer might provide a subsequent reminder of the deadline – but does not actually renew the registration. If Haynes and Boone represents you with respect to a trademark registration, we will contact you well in advance of any renewal deadlines. Click here to view an example of such an offer.
- Trademark monitoring offers. The scammer offers to “monitor” the brand owner’s trademark, but may or may not take any action, or may do nothing more than advise you of upcoming deadlines. Intellectual property counsel can direct you to legitimate trademark monitoring companies that can notify you of potential infringements as they occur. Click here to view an example of such an offer.
- Offers to record a trademark with U.S. Customs, or invoices for such recordals. Trademark owners concerned that infringing or counterfeit products might be imported into the United States may indeed record their registrations with U.S. Customs and Border Protection, which will attempt to prevent the infringing goods from entering the country. Companies behind the scam offers may or may not actually record the brand owner’s registration with U.S. Customs, but even if they do, the fees they charge are excessive. Click here to view an example of such an offer.
- Notification that a brand owner’s domain is expiring, with an offer to pay for the renewal. These scams are particularly devious, as they concern real domains registered to a company that truly may be about to expire – and the true registrar might send out a similar, but legitimate, e-mail. However, the scam offers come from companies other than the registrar that have no power to effectuate the renewal. To renew a domain, you should always log in to your account with the true registrar, rather than clicking on links in an e-mail. Click here to view an example of such an offer.
To avoid any headaches, companies should carefully examine any trademark-related or other intellectual property-related notices to ensure they were, in fact, sent from a legitimate company. Given that such fraudulent actors often choose company names that imitate official governmental agency names, extra care must be taken. When in doubt, do not respond to such notices, but also do not simply discard them. Instead, we suggest that brand owners forward such notices to their intellectual property counsel for review. Please note that if Haynes and Boone represents you with respect to a particular filing, official correspondence from the USPTO will be sent to us, not directly to you.