Scams, Scams Everywhere: Beware of Trademark Monitoring Services

By: DEAN R. KARAU

December 2008

“What’s the use you learning to do right, when it’s troublesome to do right and ain’t no trouble to do wrong, and the wages is just the same?” From Mark Twain’s The Adventures of Huckleberry Finn.

A whole bunch of folks, it seems, have figured out that the wages of sin are the same as those of virtue, at least where potentially gullible trademark owners are concerned.

Trademark owners, flush with pride after having filed a new U.S. trademark application, may receive an important looking communication warning, for instance, that the United States Patent and Trademark Office (“USPTO”) has allowed confusingly similar marks to be registered. The company sending the communication offers to monitor USPTO records and warn the trademark owner of any confusingly similar marks filed. In other cases the communication looks “official,” implying an affiliation with the USPTO or another governmental entity, and offering special protection or other services.

In almost all cases, the unsolicited services are a scam, and in all cases they are over priced and next to worthless.

Below is one example of such a communication recently received by a client:

These schemes are not limited to U.S. trademark filings. One of our non-U.S. associates told us about one of their clients who, unfortunately, responded to the solicitation below, making the payment requested:

The onslaught of such unsolicited communications has become so significant that recently the USPTO itself felt compelled to issue a warning to trademark owners to look out for schemes clearly intended to separate them from their money:

The International Trademark Association similarly issued an advisory to be careful if you receive correspondence from the following companies offering unsolicited services often unnecessary and intended to confuse you into believing that the service is offered by an official government agency:

• TMI Trademark Info Corporation, in Texas
• United States Trademark Protection Agency (USTPA), in Seattle, Washington
• Global Edition KFT
• Trademark Renewal Service, in Washington, D.C.
• Globus Edition S.L., in Palma de Mallorca, Spain
• Company for Economic Publications Ltd., in Austria
• Institute of Commerce for Industry, Trade, and Commerce, in Switzerland
• CPI (Company for Publications and Information) Anstalt, in Liechtenstein
• Société pour Publications et Information S.A.R.L., in Vienna, Austria

There are legitimate, reputable companies which provide “trademark watch services,” monitoring the USPTO’s Official Gazette for applications for similar marks. Depending on the particular type of watch desired, their charge for this service is in the range of a few hundred dollars per year. For particularly important trademarks, the watch can be extended internationally and/or to other information sources. If it is important for you to proactively be on the lookout for marks similar to your mark, your attorney can arrange for a watch service with a reputable company.

Because you have filed a trademark application, you are vulnerable to unsolicited requests for payments of fees. In most cases, they are probably scams, hoping you’re a fool who can be parted from your money. Don’t fall victim to those who figure it ain’t no trouble to do wrong.