Trademark and Patent Owners Beware: Misleading Solicitations on the Rise

January 9, 2019 Alerts and Newsletters

After successfully registering your trademark or receiving your issued patent, a notice from a private company requesting additional watch, renewal, or registration services appears in your mailbox or inbox. The offer might not only be too good to be true, but is likely fraudulent.

With the owner name and address of each trademark application or registration and issued patent public record, third parties can easily access your contact information and use it to create solicitations and requests for payment that appear quite convincing.

These notices typically offer assistance with the registration of your patent or trademark in worldwide databases (that don't exist or provide any value), discounted renewal and annuity services (that aren't necessarily accurate or required), or worldwide infringement monitoring subscriptions (that come at a hefty price).

Although these deceptive solicitations aren't new, they are continuing to increase in prevalence. The United States Patent and Trademark Office is aware of these fraudulent notices and continues its efforts to combat them, but it is a tall task.

How do you spot a fake solicitation?

Confirm the sender's credentials – All official correspondence regarding your trademark or patent will be sent by the United States Patent and Trademark Office located in Alexandria, Virginia. A mailing or return address in China, Russia, or another foreign country should be viewed as a red flag. All emails will be sent by the United States Patent and Trademark Office from the domain "uspto.gov." If you have appointed an attorney to represent you, the United States Patent and Trademark Office will send all official correspondence directly to that attorney, not to you. Always share any notices received with your appointed attorney, especially before you write a check or otherwise submit payment.

Pay attention to the details – Many entities may attempt to mimic the names of government offices. The notices may even include publicly available government data, like your trademark or the title of your patent. Read carefully to ensure that the notice you received is in fact from the United States Patent and Trademark Office and not an entity attempting to mimic the Office.

Beware of requests for payment – Any direct requests for payment should be viewed with strong skepticism, particularly if those amounts do not correspond with the United States Patent and Trademark Office's fee schedule.

Compare your notice – Visit the United States Patent and Trademark Office's website for specific examples of fraudulent solicitations that others have received.

Still unsure if it is fraudulent?

For guidance on whether or not the notice you received is in fact deceptive, contact Kelly Donahue or another member of Verrill Dana's Intellectual Property Group based in the firm's Boston, Massachusetts and Portland, Maine offices.