By Christopher R. McElwain
Even if they make it past our spam filters, most of us have learned to ignore emails from the Nigerian prince looking for an American bank account in which to deposit his fortune, the Hong Kong businessman offering an unbelievable financial opportunity, the UK Lottery with exciting news about a contest you didn’t even know you’d entered. Trademark applicants and owners, though, have increasingly found themselves the victims of a more convincing scam.
One day, your company receives a letter on fancy stationary with an official-looking letterhead—from The Trademark Compliance Center or the Register of International Trademark or the WIPT (whatever that stands for) or the International Catalogue of Trademarks—filled with details about a real trademark application that your company really did file. It lists the name of the trademark, the serial number, and all kinds of other details, all of which seem accurate. It then attaches what appears to be an invoice. Your company owes $1,425 or $2,344 or some other puzzlingly exact figure.
The process of applying for a trademark registration in either the U.S. or abroad can be a byzantine maze of forms and fees and deadlines. Pay this sum by this date or lose your filing priority. File this petition within this period or your application will be abandoned. The international trademark system is controlled by a thicket of treaties and acronymic agencies: Paris Convention, Madrid Protocol, Madrid Agreement, USPTO, WIPO, IB, OHIM. With so many moving parts, it’s no wonder that many accounting departments might shrug their shoulders at another incomprehensible bill related to their intellectual property and simply cut a check for the amount demanded.
Don’t do it. The detailed trademark information that these letters rely on to make their “services” sound legitimate are all publicly available. They could be compiled easily by a bot or by an intern with their finger on the ctrl+c buttons. Some of these companies justify their shakedowns as a fee for being included in their own private trademark “registers.” Whether or not any of these registers exist in any form, they are most definitely bogus. The only trademark registers that actually matter are those maintained by countries’ or regions’ official government trademark offices (for instance, the U.S. Patent and Trademark Office (USPTO) in the United States) and the international database run by the World Intellectual Property Organization (WIPO).
The USPTO has published a non-exclusive list of some of these scammers, but new phony acronyms are invented every day, and the list doesn’t even attempt to address the hundreds of scam artists who rely on international applications and registrations, purporting to protect your mark in China or Mexico or wherever. If you receive a trademark notification of questionable authenticity, your best resource is your IP counsel. We know the registration processes inside-out and have no trouble distinguishing legitimate trademark correspondence from attempts to exploit the fear or inattentiveness of busy applicants.