August, 22nd, 2017

By Victor P. Lin

Filing for a patent or trademark to protect your intellectual property can potentially open you up to scams. Responding to fraudulent notices pretending to be from the United States Patent and Trademark Office (USPTO) can result in loss of money, or worse, loss of control over your IP. Don’t be fooled and avoid these outcomes by relying on your IP counsel to spot these deceptive practices.

Scammers are increasingly targeting applicants and owners of U.S. patents and trademarks. Although there are different methods, these scams have a general scheme. A private company unaffiliated with the USPTO uses information obtained through the USPTO’s public database to mail solicitations relating to pending applications and registrations. Since these solicitations contain accurate information of a patent or trademark and often include an official-looking bar code, they can be tricky to spot. The scams can appear in various forms, such as an invoice relating to a trademark registration renewal, an invoice for payment of patent maintenance fees, or a notice of a filing deadline with offer of legal services for a fee. The invoices usually indicate fees that are significantly inflated above the official amounts required by the USPTO, and often display eye-catching warnings, for example “patent cancellation notice”, “important notification regarding your federal trademark”, or “your trademark is about to expire.”

Responding to these scams can have dire consequences. In some instances, people lose their money and never receive the offered services. There have been cases where people pay the invoices, thinking that they are paying maintenance or renewal fees to the USPTO. Since money is never received by the USPTO, the missed payments result in cancellation of the trademark registration or abandonment of the patent. In more extreme situations, direct control over the patent or trademark could be transferred to a third party.

Earlier this year, a California court convicted several individuals for money laundering in connection with a trademark scam. Over $1 million in proceeds were collected by the scam, which used a pair of companies called “Trademark Compliance Center” and “Trademark Compliance Office” to make fraudulent offers to applicants for registration and infringement monitoring services. Neither of these services were ever provided to victims of the scam. The USPTO has been working with other federal agencies in an effort to stem the tide of these scams and limit the number of victims defrauded. However, the best shield which patent and trademark applicants and owners have against these scams are their IP lawyers.

The first step whenever you receive a correspondence relating to a patent or trademark is to consult your attorney. Never pay or respond to anything you receive from a third party, including a party purporting to be the USPTO or counterpart foreign office. By forwarding the correspondence to your attorney, a detailed review can be performed as to its legitimacy. Your attorney accordingly acts as a filter in determining what payments are actually due to the USPTO (or counterpart foreign office) and what payments are scams.

If you are not represented by an IP attorney, then there are some characteristics to look for in detecting fraudulent invoices and notices. Check the company name and address on the correspondence. Scams sometimes use company names that include words like “United States”, “U.S.”, “Registration”, “Agency”, “Bureau”, or “Office”. However, all official correspondence concerning an application or registration, whether for a patent or trademark, will always come from the “United States Patent and Trademark Office” in Alexandria, Virginia, with a zip code 22313. All official emails will also be delivered from an address having the domain “@uspto.gov”. Check for the USPTO seal (depicted below).

Scammers will use different logos or attempt to display emblems which closely resemble the official seal. In addition, read the fine print. A private company will sometimes admit that it is not associated with the USPTO. Any notice requesting money be sent to a bank located outside the United States will never be official USPTO correspondence. Finally, spelling and grammar mistakes are a final clue that the notice is a scam. Despite these tips, it is recommended that you seek assistance from an IP counsel to determine whether you received official USPTO correspondence or a scam.

WHIPgroup is leading counsel for U.S. and international technology companies. We specialize in patent and trademark law.

© 2017 Whitmyer IP Group, Stamford, Connecticut.

© Copyright 2018 Whitmyer IP Group