IP Law Bulletin

FULL ARTICLE

The nature of public trademark data lends itself to information mining and a significant amount of confusion, deception, and fraud. Trademark scams are a problem that have been steadily increasing over the past few years. With technological improvements it is now easier for opportunists to search public trademark data and extract relevant information, including owner and attorney name and contact information, for their commercial gain. Companies from all over the world are extracting this information from the public record and using it to send mass communications to trademark owners and counsel. Often these scams appear as official looking documents or invoices, which clients and counsel may both be inclined to pay because they appear to be legitimate. The scams are becoming more and more sophisticated, and companies have successfully developed scam communications that look less like junk mail and more like proper invoices or official government agency correspondence. Accordingly, recipients need to recognize differences between scams and official correspondence to avoid making unnecessary payments.

The most common trademark scam we see impersonates official correspondence. For example, some correspondence will very closely resemble communications issued by the United States Patent and Trademark Office (USPTO), the Office for Harmonization in the Internal Market (OHIM), which handles trademark applications in Europe, the World Intellectual Property Organization (WIPO), or other major trademark agencies. The names of the sending organizations will sound official, such as “Chinese Intellectual Property Office.” These private companies will copy all of the publicly available information regarding the application or registration into an e-mail to the attorney, owner, or both.

The correspondence typically either requests a fee for publication of the mark in various “registers,” or indicates that there are third-party applications or registrations in their country that may affect your registration. Some of the companies have advanced technology that allows them to search public records for when an official fee payment is due, and send out scam mail requesting payment of such fees around the due date. Such a scam seems more credible because the Applicant in fact is expecting to have to pay the fee around the time of receipt. Often times these scams will include fine print reading “this is not an invoice” or the like, but unfortunately sometimes it is too late once this fine print is discovered.

Two examples of particularly official-looking correspondence are provided below, the first is from the “Trademark Compliance Office” in Arlington, VA, and the second is the “Form TM-2008A” from the “United States Trademark Center” in Washington D.C.

FIRST TRADEMARK EXAMPLE

SECOND TRADEMARK EXAMPLE

Notably, the USPTO is in Alexandria, VA, not Arlington, VA, and does not have a “Trademark Compliance Office.” Further, the USPTO does not refer to itself as the “United States Trademark Center.” These official sounding names can be misleading. Additional deception is created by the references to passages of the Lanham Act, which is one of the main Congressional laws that govern trademarks in the United States. If one takes the time to read the fine print of Form TM-2008A, the notification explains, in less conspicuous wording, that its trademark monitoring “is an elective service and is not a legal requirement or a mandatory registration.” Payment of $385, the fee required in this typical example, ostensibly results in monitoring of published USPTO trademark applications similar to the recipient’s mark – but the price is inflated and the benefit to the trademark owner is doubtful. Any trademark owner seeking to monitor their trademark to prevent others from encroaching on their rights should consult with their trusted counsel to find a reputable service to monitor the trademark at market rates.

There are three major tip offs in these “official registry” types of misleading solicitations. The first is that the company name and address on the bogus invoice are not the official name and address of the trademark organization from which you, or more likely your counsel, should be getting a bill. In the case of the U.S. Patent and Trademark Office, all official correspondence will be from the "United States Patent and Trademark Office" in Alexandria, VA and, if received by e-mail, specifically from the domain "@uspto.gov." The second tip-off is that the bogus invoice will typically include some sort of fine print reading “this is not an invoice” or something similar. A third tip-off is that the requested money should be sent to a bank located in a country other than the country or jurisdiction at issue. As a rule of thumb, any time you receive communication from a third party about paying an invoice or bill, you should consult your existing counsel to confirm that you do not need to pay the bogus invoice. Most counsel will tell you that the only bills you should pay should come directly from your counsel, as they will act as the filter to determine what payments may actually be owed to the government and/or a search agency and which are scams.

Another common trademark scam sends urgent notices to registrants indicating that their registered mark is in use in a particular country, or that a very similar mark has been applied for in a particular country. These scams advertise enforcement or protection of the registered mark or application for a fee. The urgent notices often cause trademark owners and counsel concern. Typically a red flag for these types of scams is that they state that someone else has applied to register a similar mark or domain name, so you must act immediately. It is good for trademark registrants to keep in mind that the registries will never send solicitations like this, much less urgent solicitations requiring an enforcement action on the part of the trademark owner.

Moreover, misleading domain name solicitations that claim that a third-party is trying to register your company name as a domain name in China and other Asian countries are proliferating. These communications purport to express genuine concern for your brand, seeking permission from you before allowing the third-party to follow through with the registration. Two examples of these types of messages are provided below:

FIRST DOMAIN NAME EXAMPLE

Dear President & CEO,

This email is from China Intellectual Property Office, which mainly deal with trademark and domain name registration internationally.  We received an application from TTF Industries Ltd on Dec 12, 2014. They want to register "[TRADEMARK]" as their Trademark in China, Hong Kong, Taiwan and some Domain (.asia/.cn/.com.cn/.hk/.com.hk/.tw/.com.tw).

We checked and found the keyword is your company's registered trademark. But have not registered in China, Hong Kong, Taiwan. So we inform you to confirm whether this registration will affect and conflict your company. If this registration will not affect and conflict your company, then we can finish registering for them as per our duty. If this registration will affect and conflict your company. Please contact us by telephone or email within 10 workdays, so we can better handle the issue.

Best Regards,

Allen Chen

Auditing Department/Manager

China Intellectual Property Office

Add:3/F,1st Building ZongFu Street No.47,Jinjiang District, ChengDu, China.

Tel: (+86) 28 8777 5008|Fax: (+86) 28 6246 5008|Web: http://www.cn-ipr.net

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SECOND DOMAIN NAME EXAMPLE

(Letter to Head of Brand Business or CEO)

Dear Sir or Madam,

This is a formal email. We are the department of Asian Domain Registration Service in China.  Here I have something to confirm with you. We formally received an application on September 3, 2013 that a company claimed "Ling Industrial Co. Ltd" were applying to register "[TRADEMARK]" as their Brand Name and some [TRADEMARK] Asian countries top-level domain names through our firm.

Now we are handling this registration, and after our initial checking, we found the name were similar to your company's, so we need to check with you whether your company has authorized that company to register these names. If you authorized this, we would finish the registration at once. If you did not authorize, please let us know within 7 workdays, so that we could handle this issue better. After the deadline we will unconditionally finish the registration for "Ling Industrial Co. Ltd".  Looking forward to your prompt reply.

Best Regards,

Andy Yang

Senior Consultant

Address: No. 166 Huangshan Road, Hefei 230001, Anhui, China

Tel: (+86) 739-5266069

Fax: (+86) 739-5266169

Website: http://www.dot-network.asia

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In our experience the third-parties that are allegedly attempting to register your company name as an Asian domain name either do not exist or in any event have not in fact made any attempt to register the domain name in question. The sender of the misleading e-mail might have the ability to register your domain name for you, but only at inflated, above-market cost. We are happy to recommend more reputable domain name registrars in Asia should registering a domain name specific to one or more Asian countries makes sense for your company.

The above scams are by no means a comprehensive list of all of the trademark scams circulating, but they are some of the most common trademark and domain name scams. These scams arose by virtue of the public nature of trademark records. Clients should be advised that not every official looking document is what it appears to be, and that they should carefully review each and every piece of seemingly official correspondence, and consult the counsel from whom bills typically come, before submitting payment to anyone. Generally, when a client has an outside attorney, the outside attorney will make all of the necessary payments without the client ever seeing a third party invoice.