Because owners of trademark registrations are listed in public databases, they are often the target of solicitations carefully crafted to look like mailings or invoices from official government agencies, fine print notwithstanding. Generally these mailings attempt to trick the unsuspecting recipient into ordering services that are unnecessary, expensive or of questionable quality. Trademark applications filed by RatnerPrestia (or other attorneys) typically list the law firm as the correspondence address. Accordingly, U.S. and foreign trademark offices will not send official correspondence to the owner of the registration or application. If you receive a document that requests payment of a fee to an organization resembling an official agency — BEWARE — it is likely a scam. If you have any doubts, forward the document to RatnerPrestia for review. Some of the more common tricks are discussed below.
Trademark Watching Services
Shortly after a registration is granted, the registrant may receive an official-looking letter from an entity who, for a fee, offers to watch for other trademarks that may pose likelihood of confusion with the registered mark. Unfortunately, this solicitation, if read quickly, may be processed as an invoice or may be interpreted as a mandatory fee required to finalize the registration process. Although engaging a watching service is often recommended, particularly for commercially valuable marks, there are a variety of watch services available from reputable service providers. If you are interested in monitoring trademark applications, registrations, domain names, or common law uses by third parties to detect potential infringement, you should consult with RatnerPrestia to discuss your options before contacting any trademark service providers.
Trademark Maintenance Solicitations
Between the fifth and sixth years after registration (when an Affidavit of Use is due) or between the ninth and tenth years after registration (when a renewal is due), a U.S. registrant may receive an announcement from an entity indicating that a payment is due to prevent cancellation of the registration. These announcements are essentially offers to process renewals or affidavits for the registrant disguised to look like official mailings from government agencies. Using such firms to process renewals or affidavits may expose the registrant to the risk of filing a declaration without a full understanding of the statutory requirements, potentially subjecting the registration to cancellation for fraud, or may result in taking fewer than all of the steps recommended to maintain and strengthen trademark rights.
Trademark Listing Services
Particularly when registrations are filed abroad, the registrant may be solicited by a listing service that offers to list the mark in a worldwide brand database or directory. Again, such solicitations may have a very official appearance, prompting the registrant to believe that it is a part of the foreign registration process or an invoice for registration fees. Listing in this type of database is of dubious value. Each foreign trademark office maintains an official registry of marks that is available for searching and for which the cost of publication is included in the application or registration fees.
Asian Domain Name Registration Scams
Increasingly, owners of trademarks, trade names, or domain names are receiving solicitations from registrars allegedly certified by the CNIIC, the Chinese agency for administration of domain names. The solicitation will explain that a third party has applied to register a long list of domain names or “keywords,” typically with .cn, .hk, or other Asian country codes. Before processing the registrations, the e-mail says, the registrar is obligated to inform the trademark owner of these pending registrations to verify the authorization of the third party or to give the trademark owner the first option of applying for the names instead. While this solicitation is based in part upon actual Chinese domain registration policies, typically there is no third party at all who wants to register the names, or the third party is a “straw man” working in conspiracy with the registrar just to provoke the trademark owner to purchase unnecessary domain names. Furthermore, according to our Chinese colleagues, keywords are of questionable value and are not popularly used in China.
Even if one or more domain names on the list is of strategic commercial value to the e-mail recipient, we strongly recommend using the services of a registrar other than the author of the e-mail. The registrar that sends out the solicitation may not be authorized to register domain names at all, may charge outrageous prices, and/or may require the recipient to sign a contract with burdensome terms. If you receive such a solicitation and are interested in registering one or more of the domain names, RatnerPrestia can help coordinate registration of such domain names with a reputable registrar. Otherwise, you should either (a) ignore the solicitation completely, or, (b) in an abundance of caution to preserve rights and to avoid arguably having acquiesced to registration by a third party, send a response to the purported registrar advising them that the alleged third party is not authorized to register the domain names, that any such registration will be considered to be in bad faith, and that all rights to pursue legal remedies against the third party are reserved. RatnerPrestia can assist with drafting and sending a response letter to the purported registrar on your behalf.
Links to Learn More
The International Trademark Association (INTA) maintains lists of companies who send trademark owners unsolicited mailings such as those discussed above. Other organizations maintain lists of offending companies who send similar mailings to patent owners. Links to some sites who maintain these lists can be found online in the Wikipedia® entry titled “Scams in intellectual property.”