Warning! Scam Trademark Solicitations

April 01, 2018

Private companies that are not associated with the United States Patent and Trademark Office (USPTO) or San Diego IP Law Group LLP abscond trademark application and registration information from publicly available USPTO databases in order to mail or e-mail deceptive trademark-related solicitations directly to trademark owners. Such solicitations include offers for legal services, trademark monitoring services, recording trademarks with U.S. Customs and Border Protection and registration of trademarks in a private registry.

Such solicitations are scams! Unscrupulous companies use names and designs that resemble the USPTO name, including, for example, one or more of the terms “United States,” “U.S.,” “Trademark,” “Patent,” “Registration,” “Office,” or “Agency.” These companies attempt to make their solicitations mimic the look of official government documents rather than the look of a typical commercial or legal solicitation by emphasizing official government data like the USPTO application serial number, the registration number, the International Class(es), filing dates, and other information that is publicly available from USPTO records. Many solicitations refer to other government agencies and sections of the U.S. Code, or may refer to upcoming deadlines concerning a registration or application. Some require “fees” to be paid and, unfortunately, trademark applicants and registrants have reported paying fees to these private companies, mistakenly thinking that they were paying required fees to the USPTO.

Unfortunately, San Diego IP Law Group LLP or the USPTO cannot elicit a refund from these private entities, though the USPTO coordinates with federal agencies, including the Department of Justice, the Federal Trade Commission, and the United States Postal Inspection Service to combat the problem. In 2016, according to a USPTO Director’s Forum report by Commissioner for Trademarks Mary Boney Denison, the Department of Justice announced the guilty pleas of two California men in a mass-mailing scam that targeted owners of U.S. trademark applications. The men, Artashes Darbinyan and Orbel Hakobyan, admitted to stealing approximately $1.66 million from registrants and applicants of U.S. trademarks through companies called Trademark Compliance Center (TCC) and Trademark Compliance Office (TCO).

The USPTO encourages duped trademark owners to file a complaint with the Federal Trade Commission (FTC). Although the FTC does not resolve individual consumer complaints, it may institute, as the nation’s consumer protection agency, investigations and prosecutions based on widespread complaints about particular companies or business practices. In addition, the USPTO encourages recipients of deceptive trademark-related solicitations to contact their states’ consumer protection authorities. Many, if not all, states have the authority to issue investigative subpoenas and file complaints against companies engaged in deceptive practices directed toward state residents.

The best advice is respond only to your designated USPTO representative such as San Diego IP Law Group LLP. Check in-coming trademark correspondence carefully. All official trademark communications will be from the “United States Patent and Trademark Office” in Alexandria, Virginia, and all emails will be from the domain “@uspto.gov. For more information on non-USPTO solicitations, and to see samples of misleading notices, visit the USPTO website.