Don’t be fooled: Spotting the scams

published in McAfee & Taft tIPsheet Alert | February 20, 2012

If you are receiving this alert, you are likely aware that patent and trademark applications, forms, affidavits, declarations, fees, notices and related correspondence can be surprising in number. The wording of such documents can seem tedious and needlessly bureaucratic. PLEASE BEWARE: some companies rely on hyper-technical wording and clever marketing to lure unsuspecting patent and trademark owners into paying wasteful, superfluous or fraudulent fees.

Recently, several of our clients received what appear to be invoices from the World Intellectual Property Organization (WIPO) or the U.S. Patent and Trademark Office. Such notices typically come with very specific data, such as the serial number, filing date, title/trademark name, a seemingly official bar code, and the appropriate agency logos. Bold and underlined terms like U.S. Customs & Border Protection (CBP) and United States Trademark Registration Office interspersed throughout the text add to the illusion of an official governmental correspondence.

Some offers purport to “watch,” “protect,” “monitor,” or “list in the official register” your trademark or patent for a specified fee. Others offer “training courses,” notify recipients of “prize awards,” or warn of trademark infringement through Asian Internet domain name extensions (e.g., .cn, .tw, or .hk). The correspondence may advise you that your application or registration is about to expire and come with a detachable stub to be mailed in with your payment. Some letters include the actual names, e-mail addresses, phone numbers and/or photographs of the department or agency’s directors and staff. Particularly sophisticated exploitations have even included fake websites which closely emulate the URL, design and content of official websites. Close scrutiny invariably exposes these mailings as nothing more than subtly designed solicitations from private companies.

Please be aware that legitimate communications concerning your filings will come from our office as long as we represent you. We will make every effort to advise you well in advance of any deadlines for the maintenance of your patents or trademarks once they have registered. Consequently, we do not recommend that you make payments to any unsolicited outside service without very carefully reviewing the material that they send.