Trademark Scams

At least once a week, my clients ask me about strange letters or emails they get related to their trademarks. This article summarizes my thoughts on this correspondence.

How Do They Get Your Information?

The federal trademark office publishes information about trademarks (and their owners) through the Official Gazette for Trademarks (OG), which comes out each Tuesday and contains bibliographic information and a representative drawing for each trademark published, along with a list of cancelled and renewed registrations. The OG is available via PDF for the most recent fifty-two issues. Information about each trademark (or applied for trademark) may also be found in the government’s comprehensive, searchable, public trademark database, which is updated daily and accessible directly from the home page of the trademark office web site.

As a result of the public nature of trademarks, when your attorney applies for a federal trademark, contact information must be provided that allows anybody (of particular interest, any enterprising scam artist) to contact you easily, armed with a lot of information about your brands and the knowledge that you have already paid some money to protect them.

Types Of Trademark Scams

Not surprisingly, the public nature of trademarks creates a fertile breeding ground for scams. Scams arise via both snail mail and e-mail, as typically enough information will be available for either. Telephone scams are less common, but this is only because these scams seem to work better in writing.

Most of the “scammy” offers you will receive as a result of applying for or registering a federal trademark are in the grey area of not technically fraudulent.  A common example is the offer to be placed in some sort of alternate registry, which is often marketed in such a way to mimic “official” registration of some sort by cloaking the offer with psuedo-important official sounding names. Offers may also be associated with symbols such as an American flag.

Regardless of their nature or origin, offers by the "trademark industry" share a common trait of dubious value, at least in this lawyer’s opinion. And some of them pose a much greater risk than just trying to sell you something you don’t want.

The most common form of scam I see these days hails from Asia, and usually originates via email. The narrative changes over time, but mostly revolves around a notice that someone in Asia is buying up your domain names (yourtrademark.biz, yourtrademark.cn, etc.) and/or is attempting to register your trademark in various foreign countries. If you engage the scammer, you will often be asked to provide credit card information to purchase services to stop this behavior.

Don’t do it.

These inquiries could be phishing scams, where your credit card information is used illegally for other stuff. They could also be trademark extortion schemes, whereby engaging the scammers actually incentivizes them to buy some domains, only to sell them back to you at grossly inflated prices. Either way, I don’t see much upside to engaging anybody who wants to discuss your trademarks except for an attorney you trust.

The Takeaway

In my opinion, engaging a trusted trademark lawyer is pretty much the only sensible circumstance to pay money for something related to your registered trademark. Legitimate expenses and services include infringement letters, monitoring of competing trademark, international trademark registrations, and trademark renewals. And good attorneys are not going to sell you stuff you don't need.

Please let me know if this article was helpful and feel free to share your own trademark horror stories. I may publish some specific examples in a subsequent article.