Have you recently received an email claiming that someone is trying to register a domain name incorporating your trademark in Asia? If so, it was probably a scam. While these or similar scams have been around in one form or another for years, in recent months, such emails have been sent to trademark owners with increasing frequency.
The email typically purports to be from a domain name registrar, and states that the registrar has received a request to register a domain name containing your trademark. They sometimes say they are writing to give you an opportunity to register the domain name in question yourself, or they may start by asking only if you have authorized the registration, likely following up with an offer to register once you express an interest. The email may claim that you have to act fast to preserve your rights in the trademark, sometimes setting a deadline only days away. The scammer tries to scare the trademark owner into acting without investigating or considering whether they really need the registration.
Typically, however, it is safe to ignore such solicitations. Of course, if you are interested in obtaining the offered domain names, you may do so, either in response to the email or through a more reputable domain name registrar. If you do not, however, it is unlikely that the threatened registration discussed in the email will actually occur.
Trademark Renewal Scams
The trademark-based domain name scam is not the only one circling inboxes recently. There are also several companies that purport to offer trademark renewal services for reduced fees, but actually do nothing more than copy and send paperwork without evaluating the paperwork or assisting the trademark owner in any way, which could lead to loss of the trademark registration. The emails, or sometimes letters, often appear official, as though they originated from a governmental agency. Trademark owners should be aware that the United States Patent and Trademark Office and most other countries’ trademark offices do not send out reminders about trademark renewals
The International Trademark Association has identified several entities engaging in such activity. Although this is not a comprehensive list, trademark owners should be wary of communications from the following entities:
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
Fee Payment Scams
A third type of scam targets both trademark owners and patent owners, and offers to include the relevant patent or trademark application on an internationally published registry. This offer is frequently sent as an official-looking invoice or debit note, and the recipient must look closely for any hint that it is not legitimate. While the invoice technically offers services, it typically appears to be an invoice for fees due on the application. Some scammers even include actual, publicly available notices from the World Intellectual Property Organization (WIPO) as a cover page to increase the likelihood that the recipient will believe the invoice is official. The invoice itself frequently mimics the layout and look of a WIPO or other official form, and may include a significant amount of genuine information to further the illusion.
WIPO has identified numerous entities making these offers in connection with patent applications under the Patent Cooperation Treaty, and includes examples of the invoices on their website at www.wipo.int/ pct/en/warning/pct_warning.html. The entities identified by WIPO include the following:
ODM - Patent & Trademark Office
WOIP - Globex World Organisation Intellectual Property
WIPD - World Intellectual Property Database
WDTP - Worldwide Database of Trademarks and Patents
ODM - Patent Trademark Register
RIPT - Registration of International Patent
ITPD - International Trademarks & Patents Database
WPTI - World Patent and Trademark Index
WBIP - World Bureau Intellectual Property
IPTD- International Patents and Trademarks Database
IBIP - International Bureau for Intellectual Property
IOPTS - International Organization for Patent & Trademark Service
IRTP - International Register for Trademark & Patent
IBFTPR Service - Register of International Patent Application
IPTR - International Patent and Trademark Register
RIPT - Register of International Patents and Trademarks
IBFTPR - International Bureau for Federated Trademark & Patent Register
IOIP - Organization for Intellectual Property
ODM - Register of International Patents
ODM - Office Data Management
FIPTR - Federated Institute for Patent and Trademark Registry Inc.
CPTD - Central Patent & Trademark Database
CCIT - Commercial Center for Industrie and Trade
CPD - Central Patent Database
Register of International Patents
Register of International Patent Bulletin/Registre des données bulletin europeén des brevetes
Institut of Commerce for Industry, Trade, Commerce/Wirtschaftsinstitut für Industrie, Handel, Handwerk AG
Central Data-Register of International Patents
In general, you should bring any document that you receive in connection with a patent or trademark to the attention of your intellectual property attorney. You should be especially wary of any document asking you for money or any unsolicited offers.