Registering your brand name as a trademark domestically or internationally can be a long, confusing process involving obscure governmental agencies requiring various fees at seemingly random intervals. Some of these demands are legitimate (International Bureau of the World Intellectual Property Organization notification that payment of a 2nd part fee is due in Swiss francs): but many others are NOT (WPAT s.r.o. invoice for 2738$ “on or before”, 2798$ “after”).

These solicitations arrive because the process of registering a trademark creates a public record. This means that anyone who infringes a registered trademark is not allowed to complain they did not know about the trademark but it also lets potential scam artists know that you have a trademark you care enough about to spend money registering.

But be careful not to be misled by the flurry of official looking invoices! Like this one:

Don't pay this invoice!
Don’t pay this invoice!

The United States Patent and Trademark Office warns against such scams, listing a number of examples (the above image was taken from their website).

If you have hired a trademark attorney to register your brand name for you, you need never pay any of the invoices yourself. Trademark attorneys will pay the legitimate ones on your behalf. In the United States and in most other countries, legitimate communications will be directed only to the trademark attorney and not to the trademark owner. When in doubt, just forward the communication to your trademark attorney.

If you are trying to negotiate the process yourself or just want to be able to spot wrongdoers, here is our list of red flags:

  1. Who dd it come from? Scammers like to use slight deviations from the correct names of the legitimate agencies. For example instead of “The United States Patent and Trademark Office”, the notice will come from entities such as the “Trademark and Patent Office” or the “United States Trademark Registration Office”.
  2. Where dd it come from? The real United States Patent and Trademark Office is located in Alexandria, Virginia. Beware of solicitations directing funds be sent to an address in New York or Philadelphia Pennsylvania. And, especially not Slovakia!
  3. Read the fine print. Some of the communications helpfully state that they are not legitimate (in a tiny difficult-to-read font, embedded in the middle of a long paragraph with otherwise unalarming factual information): “THIS PUBLICATION IS AN ELECTIVE SERVICE WHICH NEITHER SUBSTITUTE THE REGISTRATION NOR PROLONGS THE VALIDITY OF THIS TRADEMARK OR PATENT WITH U.S.P.T.O.”
  4. Watch the grammar! Typos, grammar and spelling errors are common in these types of scams. See the example in our red flag number 3…
  5. Check the website address. The real United States Patent and Trademark Office operates from the address USPTO.gov. Addresses such as patenttrademarkoffice.org, on the other hand, take you to a website that explains, in the “About Us” tab: “Headquartered in New York City, the Patent Trademark Office is the nation’s premier Trademark and Patent renewal service.” (ha!). Likewise, World Intellectual Property Organization (WIPO) operates from the address WIPO.int. Be suspicious of any address ending in a .com, .org or .us.
 Don’t fall prey to these confusing communications!

 

 

It makes complete sense that a brand owner shouldn’t be able to lie to the Trademark Office when it tried to register its brand name as a trademark. Let there be consequences for making false statements! But it is not always that easy to avoid the fraud cow pie.

For example, when you file an application to register a trademark you are supposed to list the goods and/or services associated with that trademark. Cow pie alert!

In 2002, a medical device company stepped in the cow pie when it filed a required declaration stating it had used its brand name on “neurological stents and catheters” but it had in fact only been using the name on catheters. Penalty: its trademark registration was cancelled, even though the company attempted to come clean by amending it to delete the offending language (“stents”).

For the next six or seven years, fraud was all the rage.  Litigants brought successful cancellation actions — or threatened to bring them — against all sorts of trademark registrations, triumphantly arguing fraud had been committed against the Trademark Office. Suddenly there were cow pies everywhere.

In 2009, a higher court tried to clean the field up, emphatically stating that proof of intent to deceive is required to establish fraud against the Trademark Office.

You would think that would put an end to the mess, but no. Fraud is still alive and well as a potential cow pie. The Trademark Office is willing to, and often has, concluded that some sneaky strategic behavior by brand owners can amount to an intent to deceive. And litigants are still trying to prove that trademark applicants intended to deceive the Trademark Office.

Just this month, a trademark registrant escaped stepping into the pie (but no doubt had to spend a pretty penny doing so).

A car dealership using its brand name in southeastern Massachusetts accused a Maine car dealership of fraud when it failed to disclose the Massachusetts outfit’s use of the same name in its application to federally register the trademark.

A federal registration entitles its owner to the exclusive right to use the registered name in the United States. Because of this, applicants are required to swear they believe “no one else, to the best of his or her knowledge and belief, has the right to use” a confusingly similar name. The board reviewing the case decided that though the Maine car dealership was wrong (the board kindly termed it “mistaken”) when it made this statement, there wasn’t enough evidence to show it was actually fraudulent. Phew!

Fraud continues to be an issue that brand owners (and we lawyers) must keep an eye on.