Yesterday, the U.S. Patent & Trademark Office (“USPTO”) and the Trademark Public Advisory Committee (“TPAC”) held a public roundtable on the topic of “Fraudulent and Misleading Solicitations to Trademark Owners” to discuss the pervasiveness of fake “invoices” being sent by third parties to trademark owners seeking to collect additional fees, while appearing to be official notices from the USPTO. (See also Meeting Notice, 82 Fed. Reg. 29535 (June 29, 2017)).
However, these “invoices” are NOT official notices from the USPTO. Depending on the results of your due diligence (see below for “What Can You Do?”), disregarding them should not have a negative impact your trademark application or registration with the USPTO.
How Are These Invoices Generated?
Once you have submitted an application to the USPTO for registration of a trademark, your address becomes a matter of public record. Scammers use contact information from these applications to assemble fraudulent invoices (which they format in such a way to suggest that they originate with the USPTO) in an effort to defraud applicants and registrants into paying non-existent “government fees” to an unaffiliated third party. Apparently, this scheme has been quite successful and there are numerous entities who engage in these kinds of scams.
What Do these Fraudulent Invoices Look Like?
The USPTO provides examples of such fraudulent invoices on its website and has a helpful video on its site to explain to the public how to deal with these scams. The World Intellectual Property Organization (“WIPO”) also publishes examples of these fraudulent invoices.
Here’s how you know an invoice is fake:
- Official correspondence from the USPTO will come from Alexandria, VA and will use the @uspto.gov domain.
- Correspondence emanating from other U.S. cities (like New York City) should be viewed with skepticism.
- Official correspondence will be sent directly to the person or entity that you designated in your application as the “correspondent.”
- The fraudulent entities are frequently located in foreign countries, especially Eastern Europe.
- The amount of money demanded is typically very high for either being listed in a directory or filing application/registration documents.
- The domain names listed by these entities are *.com or *.org or *.net addresses. (Hint: Government employees will not use Yahoo or Gmail for official correspondence – their email addresses will generally end in a “.gov” even if not specifically “@uspto.gov”.)
This practice is so common that the USPTO even has guidelines on its own site to help applicants and registrants avoid getting scammed.
What Can You Do?
If you receive an invoice for trademark services that’s questionable, never *just* pay it. Dig deeper:
- If you receive such an invoice, show it to your trademark attorney for confirmation that it can be ignored without penalty.
- Don’t just ignore the correspondence, in case it’s a legitimate (but poorly drafted) cease and desist letter that might subject you to legal liability.
- Your attorney will have a better idea about upcoming deadlines and projected costs.
- Do not assume that this invoice was generated by your attorney or that it reflects a failure to estimate correctly what the costs of the application would be.
- Read any invoices you receive VERY carefully and look for indicia of authenticity.
- Note that the USPTO does not simply send an invoice for renewal fees – instead, there are established deadlines by which these renewals must be completed.
- Registrants are required to track these deadlines and submit their renewals timely or risk cancellation of their registrations.
- Check the underlying URLs (domain name addresses) – are they official?
- Or links to a yahoo.com or gmail.com account?
- If it’s not a legitimate government domain name address, you can assume it’s a fraud and do not pay it before calling your attorney for clarification.
- Check the status of your applications or registrations on the USPTO’s Trademark Status & Document Retrieval to confirm whether any filings are actually due.
- If this is a fraudulent solicitation, it is possible that a deadline period has opened (such as for a post-registration maintenance filing), but there usually is a period of time before the deadline closes. Double check the Status portal and talk with your trademark attorney before taking any action.
- In any event, the fees asserted in these “invoices” are likely inflated and may not result in any value being afforded to the trademark owner.
- If you think you are looking at a good criminal case to report to law enforcement:
- Don’t threaten to sue the sender or report them for criminal prosecution – law enforcement works best when targets are not aware they are under investigation.
- Keep the envelopes/transmittal documents for any solicitations you receive – the postmarks and stamps will be important for law enforcement to use during its investigation.
- If you paid money to this entity, keep all documentation of the payment and clearance of the payment so that law enforcement can trace it to the actual recipient.
Recent Enforcement Action
On December 12, 2016, the USPTO announced a guilty plea entered into by two California men “in a mass-mailing scam that targeted owners of U.S. trademark applications.” “USPTO Fights Fraudulent Trademark Solicitations,” Director’s Form: A Blog from USPTO’s Leadership, Dec. 21. 2016.
The Department of Justice reported that the defendants admitted to defrauding approximately 4,446 victims for about $1.66 million. DOJ Press Release, “California Man Pleads Guilty to Perpetrating Trademark Scam and Money Laundering; Associate Pleads Guilty to Helping Launder Proceeds of Scam,” Justice News, Dec. 12, 2016.
These men operated companies called “Trademark Compliance Center” and “Trademark Compliance Office,” which were involved in scams that promised to monitor trademarks for potentially infringing marks and to register these marks with Customs and Border Protection (CBP) in exchange for $385. Id. These defendants never registered, or intended to register, any of the marks with CBP for the customers who paid the fee. Id. Both defendants were convicted of various charges of money laundering, false bank entries, and mail fraud and sentencing was to occur in June 2017. (No word yet on the length or type of the sentence imposed.)
For more details, see IRS-Criminal Investigation Press Release, “Former Wells Fargo Branch Manager Convicted of Laundering Proceeds of Trademark Scam,” Mar. 13, 2017; Department of Justice, “Former Wells Fargo Branch Manager Convicted of Laundering Proceeds of Trademark Scam,” Justice News, Mar. 13, 2017.