September 21, 2018

Watch Out for Trademark Registration Scams

One of the facts of modern life is that you will be the target of scams. Sometimes it's the son of the former defense minister of Nigeria. Sometimes it's someone trying to trick you into paying them money to do something with your trademark.

U.S. trademark registrations have to be renewed every 10 years or they expire. Most trademark owners are somewhat aware of that fact, but many are somewhat vague on the subject and don't know just what to expect when the time for renewal rolls around.

If your trademark is registered and approaching renewal time, you may well receive a very official-looking notice that seems like it might be from the government and has something to do with paying for renewal of your registration. It may have details about your registration, including the number, the registered mark, and the renewal date.

If you receive such a notice, you should read it carefully -- at least the first time; you may get more than one and after a while you will recognize the form. Be aware that the U.S. Patent and Trademark Office will not be sending you an invoice at renewal time. If you used an attorney to register your mark and get something that looks like an invoice that's not from your attorney, be very suspicious.

There are some common components to these bogus notices. Many of the notices come from senders whose names are tantalizingly close to "U.S. Patent and Trademark Office." The real U.S. Patent and Trademark Office has a list on its website of "misleading notices" of which it is aware. The list is long, and includes names such as "Patent & Trademark Agency," "Patent & Trademark Bureau," and even "Patent & Trademark Office." You can see the list, along with sample notices, by clicking here.

The notices usually look quite official, as if they might have come from an honest-to-gosh government agency. They typically will have actual information taken from your registration, such as the mark, the registration number, and the opening of the renewal period, all of which is available online. Often they will have a box with a large letter in it, for no apparent reason other than to give a patina of bureaucracy.

They will typically have an offer, in small print, to do something that seems close to renewing the registration. Some recite that by signing and returning the form, you authorize the sender to renew the registration, although they do not appear to have been sent by a law firm, and it's not clear what actually happens if you return the form and pay the fee. They notably do not ask you to provide the sort of information that would be required to legitimately renew a registration. Some promise to list your trademark in some sort of registry, although since that registry is not maintained by any country or known organization such as the World Intellectual Property Organization, the value of that listing is probably close to nil. Very close. The fees, meanwhile, are typically substantial.

Here are a couple of samples of such notices that clients have received in 2018:

Scruton Trademarkscams Patent Trademark Bureau Scam Notice 2018 1
Scruton Trademarkscams Intl Catalogue Of Tms 2018 Redacted

So watch out. And it's not a bad idea to alert accounts payable, because sometimes these look enough like an important invoice that they wind up there.