August 28, 2020
Are you thinking about pursuing a trademark registration for your business or have already filed an application for one? Congratulations, you are taking important steps to protect your business’ brand and distinguish yourself from others operating in your business market. However, filing an application for a trademark and prosecuting it to registration is not an inexpensive process. After making a significant investment in obtaining a trademark, the last situation you want to encounter are organizations deceiving you into spending thousands of dollars to have your mark registered on bogus trademark registries having no affiliation with the U.S. Patent and Trademark Office (USPTO). However, this is a very real problem faced by many applicants for and registered owners of U.S. federal trademark registrations.
In this scheme, various organizations passing themselves off as official trademark registries monitor USPTO trademark application, publication, and registration records. They then contact the applicants or registrants directly and request payment for their trademark to be entered onto a bogus registry. To raise awareness, after assisting a client in filing a trademark application, our standard practice is to make sure to advise our clients that they will potentially receive communications from these bogus registries and to not pay any invoice sent to them. However, we still receive calls or emails asking whether these invoices are legitimate and should be paid, particularly since the communications can be official looking.
How can you identify these fake organizations and avoid being taken advantage of? If you receive any correspondence regarding the payment of fees related to your trademark application or registration, contact your trademark attorney for verification. Your trademark attorney should always be aware of any expenses related to advancing your trademark application or maintaining your trademark registration. You can also contact the USPTO Trademark Assistance Center and confirm the invoice you received is legitimate. All official correspondence regarding your trademark application or registration should come from your attorney or the USPTO.
Careful inspection of these bogus invoices can also help you recognize a scam. These invoices will often look official as they display an image of your mark along with information from your trademark application or registration, such as your application serial number or registration number. Bogus invoices will also reference the international classes you filed your trademark application under. However, invoices from bogus trademark registries usually contain some fine print language that should raise red flags. This language will also often indicate the invoice is an offer, upon which payment of the invoice fee, or the execution and delivery of the invoice, results in a binding contract for a certain duration. Further inspection of these invoices will typically lead you to discover they often make reference to general business terms that will govern the contract. The content of these general business terms are a good indicator the invoice you are receiving has no association with the USPTO.
While bogus trademark registries can be tricky to identify at times, taking a small bit of time to carefully inspect the correspondence you receive regarding your trademark and asking a few follow-up questions can be of great help in making sure you do not make a costly mistake. If you are unsure whether an invoice you receive regarding your trademark is legitimate, be sure to contact your trademark attorney or the USPTO before making payment.