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Beware of trademark registry scams

Have you recently received an invoice for an international trademark registration fee and wondered in which country the mark was registered? Was the invoice legitimate looking, yet somewhat confusing? Were you wondering why you received the invoice directly rather than through your trademark attorney? 

Hopefully you thought about all of the above and inquired into the situation a bit more.  The sad reality is that there are several overseas organizations, such as http://www.patentonline.org, which use these types of letters and their hoax Web sites to extort money from unwitting businesses. You are more likely to become duped if you have a large, international trademark portfolio, so registration and maintenance costs are nothing out of the ordinary; or if you typically handle all such fees directly in house.

A client recently received an invoice for the registration fee of one of its marks for almost $2,500 from the "Register of International Patents and Trademarks."  It contained a drawing of the client's trademark with a registration number (which coincidentally corresponded with the client's U.S. Reg. No. for the mark) and a "Published" date (which corresponded to the U.S. Registration Date).  The fine print:

"Dear madam, and sir,

The publishing of the public registration of your patent is the basis of our offer.  We offer the registration of your Patent dates in our private Database. ... Our offer will be accepted, with the payment of the amount, and becomes a binding contract between you and ODM srl, is irrevocably binding for one year.  Please notice that this private registration hasn't any connection with the publication of official registrations, but is a solicitation without obligation to pay, unless our offer is accepted...."
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Had they paid the fee, they would have received registry in nothing more than an unofficial, private registry. It was a scam. The clear lesson is to always carefully review invoices and correspondence such as this. If you receive any invoices for trademark or patent fees, carefully review the invoice to ensure it matches up with your company's trademark portfolio. 

Be vary of invoices that do not clearly indicate a known patent and trademark registry, such as the U.S. Patent and Trademark Office. If your attorney has assisted you with the trademark application/registration, you should not be receiving invoices directly. Last but not least, always read the fine print. Of course, if you have any doubt, be sure to consult with your trademark attorney to verify whether it is legitimate. 

While you would never want to miss an important fee deadline, you certainly do not want to fall prey to this type of scam.

Mindi Giftos is an attorney in the Madison office of Whyte Hirschboeck Dudek S.C. Her practice encompasses intellectual property, intellectual property litigation and commercial litigation. Ms. Giftos specializes in trademarks, unfair competition, copyrights, domain names, trade secrets, anti-counterfeiting, defamation, publicity rights, and non-competition. In addition to her intellectual property expertise, Ms. Giftos is also involved in a broad range of commercial litigation matters. Ms. Giftos can be reached at mgiftos@whdlaw.com or (608) 234-6076.


The opinions expressed herein or statements made in the above column are solely those of the author, and do not necessarily reflect the views of WTN Media, LLC. WTN accepts no legal liability or responsibility for any claims made or opinions expressed herein.


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