Sometimes, it seems not a day goes by without a client calling about a trademark-related scam. To help you avoid becoming another victim, I am writing about two of the more common fraudulent schemes.
The first involves the transmission (via snail mail or email) to the owner of a trademark registration of a notice that looks official, and may even be labeled “Patent and Trademark Office.” The notice requests payment to “renew” a trademark registration, warning that if it is not received by a specific date, the trademark registration will expire. To be sure, trademark registrations must be maintained (between five and six years following registration, and every tenth anniversary of registration). However, the date of “renewal” in these fraudulent notices is inaccurate, typically a year or more before (or after) the actual renewal deadline, as the scammers know many trademark registrants have counsel who will notify them of the deadlines. Some examples can be found here, here and here. More recently, clients have contacted me about emails addressed to them warning that if they do not pay the required “fees,” their trademark registration(s) will expire, so these scammers are becoming more sophisticated and no longer relying exclusively on snail mail. These emails look official too. One recent email used a stylized logo for “IPTR International Patent and Trademark Register,” which, of course, does not exist.
The real U.S. Patent and Trademark Office (“PTO”) does not correspond by mail concerning renewal deadlines. Rather it sends email notifications to you or your counsel. If you have experienced trademark counsel, that attorney should be keeping track of the deadlines to maintain the registration. Accordingly, we recommend ignoring any paper notices about upcoming deadlines and reaching out to your trademark counsel if you have any questions.
The second type of scam is a newer one, born after Amazon launched its Brand Registry. The Amazon Brand Registry allows owners of any trademark registration consisting of words and a design, or words alone, to electronically enroll its brand. The Amazon Brand Registry greatly benefits trademark registrants, because Amazon will automatically take down, or prevent, the sale of any counterfeit goods that it finds, through automated means, on its website – that is, those goods that copy the registrant’s trademark. To ensure that only the actual owners of trademark registrations (and not counterfeiters) are enrolling in the Amazon Brand Registry, Amazon will send an authentication code to the correspondent recorded in PTO for the trademark registration in question. This correspondent is typically counsel for the trademark owner who handled the original trademark application, or maintenance or renewal of the resulting trademark registration, in the PTO. Counterfeiters who wish to sell their products on Amazon have started to file “change of correspondence address” forms changing the names of the correspondent associated with registrations in the Trademark Office. Then, when Amazon sends the code to the counterfeiter’s address, the counterfeiter is able to enroll in the Amazon Brand Registry, pose as the legitimate trademark owner, and sell its infringing products. The good news is that the PTO has caught on to the scam and has begun to scrutinize these change of correspondence address forms. Additionally, the PTO also alerts, via email, the existing correspondent (the attorney or trademark owner who handled the application, or maintained or renewed the registration) of the filing of a change of correspondence address form. If the original correspondent does not recognize the new correspondent, it can alert the PTO (also via email) of the scam, and the PTO will not change the correspondence address. This scam is one of many good reasons to have an attorney handle the filing and maintenance of your trademark registrations.
I hope that knowing about these common fraudulent schemes will help you. Should you have any questions about the subject of this article, or any other trademark, copyright or unfair competition matter, please contact me at firstname.lastname@example.org.