Common Scams Trademark Owners Should Be on the Lookout For
Almost every day we receive inquiries from clients who have received notices – either in the mail or by email – from official-looking senders, indicating that the client’s trademarks or domain names are at risk if urgent action is not taken immediately. Knowing that the company’s trademarks are valuable and that a third party’s misappropriation could irreparably damage the company’s reputation, what should you do?
In many if not most cases, ultimately, nothing. These solicitations are scams which should be ignored. Trademark owners and their employees should come to recognize these common scams, so they do not fall victim to or spend unnecessary time dealing with them.
Domain Name Scams
The domain name solicitations, which we see almost daily, consistently follow the same pattern, and indeed are often word-for-word identical, with just the names changed. A typical such email begins like this:
We are a professional intellectual property rights consultant organization, mainly engaged in domain name registration and internet intellectual property rights protection.
We formally received an application from "______________.'' On August 6, 2010, whom applied for registering the internet keywords ''[YOUR COMPANY NAME]" and some related domain names with our organization….
In the vast majority of cases emails like these come from a person or entity in China or elsewhere in the Far East. They often claim to be an officially sanctioned domain registrar, and they require a response within a very short period of time (or “asap”).
The key to recognizing such domain name scams is understanding the domain name registration process. Under current practices, in the United States and everywhere else, requests to register a particular domain name are not checked to see if the domain name incorporates a registered trademark, and no effort is thus made to contact the owner of a trademark which might be implicated. Trademark owners are not given any sort of veto or right of first refusal on domain name registrations. Thus, everything about these emails is false.
Trademark Registry, Publication and Monitoring Scams
In the offline world, trademark scams typically come in the form of mass-mailed solicitations to have one’s mark “registered,” “published” or “monitored” in a prestigious-sounding registry or directory. These solicitations generally have official-looking names at the top, and are often designed to look like they have come from a government agency, such as the “International Register of Trademarks” or the “United States Trademark Protection Agency.” Many look like invoices and will sometimes include a convenient “tear and pay” coupon. In fact, your payment would get you nothing of value. If the advertised registry is actually published by the operator of the scam, such a publication has no value from a legal standpoint. In many cases, however, no such publication exists.
What can we do?
The best weapon against scams such as those described above is knowledge. In the United States and most other countries, a trademark owner will not be contacted by that nation’s IP office directly regarding maintenance or renewal of its trademarks, and will never be invoiced by the official patent or trademark office. On the domain name side, the current domain registration system does not give prior notice to trademark owners when their mark is about to be registered as part of a domain name or keyword. When in doubt, a questionable email or piece of correspondence should be forwarded to the company’s legal department or outside counsel.
All levels of employees who could be the recipient of such a solicitation, including accounting and IT personnel and individuals who regularly open mail, should be made aware of such scams and instructed not to be alarmed by them and not to respond to them. Do not reply to email solicitations even to tell the sender that you are not interested. The reply only tells them they have found a valid email address which they can then attack with all manner of spam, viruses, malware, etc.
We encourage our clients to be proactive about protecting their brands here and abroad, and have helped many clients develop and implement global trademark and domain name protection strategies which provide the appropriate amount of coverage consistent with the client’s business needs.
This post on Trademarks was authored by Robert O'Connell.