THINGS AREN’T ALWAYS WHAT THEY SEEM

“Scam” notices for trademark services seem once again to be on the rise. Because filings with the United States Patent and Trademark Office (as well as state and foreign registers) are publicly available, unscrupulous entrepreneurs are able to easily obtain sufficient information to bombard applicants or registrants with personalized solicitations for services—often disguised as official notices of impending deadlines or bills for services.

Official-looking letterhead from such organizations as the “Trademark and Patent Office,” “Patent & Trademark Bureau,” “Patent and Trademark Agency,” or “United States Trademark Registration Office” generally appear as an invoice for a required registration or renewal fee, or for a new or continuing directory subscription or monitoring service. They are often sent in a windowed envelope bearing a warning such as “IMPORTANT—OPEN IMMEDIATELY” or “IMMEDIATE RESPONSE REQUIRED.” Some include return envelopes for the ease of payment. They have office/return addresses in Washington, D.C., Alexandria, Virginia, Arlington, Virginia, or a major city where government agencies frequently maintain branches—e.g., New York, Los Angeles, or Chicago.

One of the more common recent examples is from the “Trademark Compliance Center” (this one in Alexandria, Virginia). An invoice-like document bears the heading “Intellectual Property Rights Recordation Alert” followed by information regarding the recording of registered marks with the U.S. Customs & Border Protection. Designed in a way that suggests the recordation is either required or highly recommended, they are typically sent after a trademark owner initially files an application for registration even though marks cannot be registered with the CBP until the mark itself is registered. CBP registration is not required, and most registered trademark owners do not need or will not benefit from such registration.

Another example, from the “Trademark and Patent Office,” shows a “Balance Due” followed by a warning that the full amount must be paid by a specified date to avoid “additional penalties and like fees.” Only after this does the notice suggest that the bill is for monitoring services which may be suspended or canceled for nonpayment—not much of a threat if one has not been receiving such services. A notice from the “Trademark Registration & Monitoring Office” is similarly vague about what services are/have been provided, but states that notice to pay was “previously sent” and must be “paid in full today” or the TRMO may impose collection fees, discontinue monitoring services, discontinue notices regarding possible third-party infringement, etc.

While the foregoing notices are deceptive, the organizations may offer legitimate services, although I have not yet heard from anyone that engaged either of these or other similar parties. Other notices are just blatantly fraudulent. Such as the notice from the “Patent and Trademark Bureau” regarding renewal. The notice expressly states—in small print—that the Patent and Trademark Bureau is a private party and that the notice is a solicitation to provide services. However, it states that if engaged for the renewal services, the party’s trademark registration will be renewed for five years. Renewals of U.S. registrations are granted for ten years. The “Trademark Renewal Service” suggests that it is offering renewal services, but payment of the requested fee will only get you the documentation for renewal. The forms are available free from the USPTO.

The USPTO has received so many inquiries and complaints that it finally added warnings on its website about fraudulent solicitations masquerading as official notices. Recipients of such notices are encouraged to file complaints with the Federal Trade Commission. Although the FTC won’t resolve individual complaints or assist in the recovery of payments, the FTC may investigate and prosecute based on widespread complaints.

Anyone receiving a questionable notice or invoice should review it carefully and read the fine print. Many such documents state that they are not a government agency, but that the notice is a solicitation or something similar. Still, if it is not from the United States Patent and Trademark Office, be suspicious, and if it asks for a payment of any kind or says that you will be billed for the service, throw it away.