In recent months, an increasing number of companies have reported receiving official-looking intellectual property notices and solicitations. These fraudulent solicitations may take the form of invoices, renewal notices, or other solicitations claiming to be from an official agency. A company holding any form of intellectual property may be a target for these solicitations, as intellectual property information is publicly available and easily procured on the Internet.
Examples of these notices and solicitations state that:
- Payment will ensure international protection for a patent or trademark
- Trademarks or business names are “about to expire” if payments are not made immediately
- The sender is a domain name registrar in China and someone is interested in registering the recipient’s trademark or business name as a domain name in that region
Such notices are almost always a scam; the United States Patent & Trademark Office (USPTO) and other official agencies rarely send intellectual property holders invoices or maintenance notices, and never send solicitations.
Further, responding to these notices may affect your intellectual property rights. In one case, a registrant responded to official-looking solicitations regarding the supposed imminent expiration of its trademarks. The solicitations included an early, and erroneous, expiration date to encourage the registrant to respond promptly. While the scam artist did submit a maintenance filing to the USPTO, the submitted document was riddled with errors, including false statements that he was a manager of the registrant and that he had knowledge of the use of the mark when, in fact, he did not. Statements such as these may unnecessarily trigger questions of fraud, if there was ever a dispute over the mark. Even worse, the same scam artist submitted a specimen of use from a competitor that appears to be an infringing use of the registrant’s mark. These filings are now permanently part of the record, because under current practice, anything submitted to the on USPTO remains part of the record, regardless of whether the submission was made in error.
If you ever have any doubt about communications you have received or the status of your intellectual property, please consult your intellectual property attorney before responding.