Trademark SCAM ALERTS

By Chuck Knull

Trademark Scam Alert
Trademark Scam Alert

Scam artists are once again on the prowl to clip trademark owners who like to pay bills for useless services or who overreact to letters and emails telling them that their trademarks are in jeopardy.  We have already received a bunch of inquiries from out clients about letters and emails they have received that either offer some extra service regarding their trademarks or imply that we, as their trademark attorneys, have missed deadlines that will cause the loss of the trademarks.

When we file trademarks for our clients, the filing information is publicly available at the U.S Patent and Trademark Office.  This means that our name and address is listed as Attorney of Record and the name and address of the trademark owner is also available.

Legitimate concerns know to contact the attorney of record about the given trademark. People with illegitimate thoughts go to the name and address listed as the trademark owner. These people create official-sounding companies and send out official-looking communications intending to cause alarm.

The kinds of communications you might receive relating to so-called extra services are things like publishing your trademarks in a book, at a charge over $1000 per three month period. (This is supposed to “add” protection to the trademarks by making them publicly available.) Another offer we have seen is a  service is to register domain names that include trademarks in various foreign countries, where, according to the offer, some local company is “just about” to take out these domain names and, by good fortune, the writer of the offer has discovered this is about to happen and put a hold on the domains until the fortunate trademark owner has the opportunity to send him a couple thousand dollars to register them.

Other offers come from so-called trademark service companies who will renew your trademarks, respond to office actions on your pending trademark applications, and the like. The prices for these proposed services are generally higher than what we charge per our fee schedule

[we would be pleased to provide you with the current fee schedule on request], and from what we have learned from reports of unfortunates who have used such services, the services provided are probably going to kill the trademark in question, rather than helping them.

We have even seen offers from a company that is sending out notices to trademark owners saying that not only have their trademarks been cancelled but also that someone else has jumped in and taken the marks (sort of a variation on the domain name scam mentioned above.)

You will not get what you think you are paying for. The offers that we have has reviewed are either worthless, such as the publication in the book noted above, which would have absolutely no effect upon the validity or strength of the trademark, or useless, such as the taking out of domain names in a foreign nation where one does no business, or counterproductive, or having a person unskilled in trademark law make filings at the USPTO.

If you receive any query regarding your trademarks that looks official but is directed to you rather than your trademark counsel, please assume it is a scam and send it on to your counsel.

14 Trademark Scams Uncovered

The U. S. Patent & Trademark Offices fight against trademark scams continues. They are now providing images of 14 non-USPTO solicitations that they have identified as big problems. In each case, they have received complaints from trademark applicants about the confusing and deceptive nature of these solicitations. Still topping their list is the “United States Trademark Registration Office” scam. If you have received a letter, invoice, or e-mail about your trademark and you aren’t sure about the source, head over to the USPTO solicitation warning page and compare it against their examples. Or, you can simply contact your trademark attorney about it.

In 2016 and 2017, scammers have been prosecuted in the U.S. for wire and mail fraud. Perhaps, putting some scammers in jail will cut down on this abuse.

The main USPTO page, “WARNING: Non-USPTO Solicitations That May Resemble Official USPTO Communications” is available here.

For your convenience, here are the links for the 14 trademark scam images that are currently available on the site (as of 10/30/12):

United States Trademark Registration Office – The original $375 invoice scam.

Patent & Trademark Agency – Renewal notice from a private company in NYC.

Trademark Registration and Monitoring Office – A monitoring service in LA that threatens “PENALTIES AND LATE FEES” if you don’t pay up.

United States Trademark Maintenance Service – Section 8 filing service from Arizona that warns of “PENDING TRADEMARK CANCELLATION”.

U.S. Trademark Compliance Service – Another Arizona filing service, similar to USTMS.

WDTP – “Registration of the International Trademark” – which is really a private database in the Czech Republic.

WIPT – “Register of International Patents and Trademarks” – same scam as WDTP.

TM Collection – “International Register of Trademarks” – this one is a print version out of Hungary, but basically ths same scam.

TM Edition – “International Catalogue of Trademarks” – TM Collection by another name.

Patent Trademark Register – another “Registration of International Patents and Trademarks” but out of Austria.

Register of International Patents and Trademarks – another “Register of International Patents and Trademarks” but from Slovak Republic.

Trademark Renewal Service – “Trademark Cancellation Advisory” from a private company in D.C.

Trademark Safeguard – Trademark Monitoring Service – Order form for a monitoring service in NYC, “THE US PATENT AND TRADEMARK OFFICE HAS ALLOWED CONFUSINGLY SIMILAR NAMES TO BE REGISTERED.”

Intellectual Property Agency Ltd. – The British version of the renewal reminder.

As always, if you get something and you aren’t sure whether it is official USPTO correspondence or not, feel free to contact us and we will take a look.

What is a Design Patent?

By <a href="http://www.knullpc.com/attorneys/Charles Knull

The main category of patents is Utility Patents which protect a new and useful invention. Light bulbs, car engines, and smart phone electronics are things with specific functions that work better than whatever they are replacing. These are protected by Utility Patents

There is another domain of patent law…design.

Design Patents are a relative backwater of patent law. But they are also a unique opportunity to get “Patented” status for a lot less money than a Utility Patent.

What is a Design Patent? It is a patent that is granted on a unique ornamental design for a product or package. In many ways, it is hybrid form of Intellectual Property with aspects of patent, copyright, and even a touch of trademark (due to its interaction with trade dress). They are applied for and examined like patents. And, the result is a real patent with an issue date and patent number (design patent numbers are generally 6 digits preceded by a “D”, like D678,015).

Design Patents are much simpler than a Utility Patent. They consist of only drawings, a sentence describing what each of the drawings is, and a single claim that just references what is shown in the drawing.

There really isn’t a lot for a patent attorney to do other than make sure the drawings and other information in the application meet all of the Patent Office’s formal requirements. The filing fees are cheaper too and expensive negotiations with the Patent Examiner are almost unheard of. Cheap (relatively) and easy.

The scope of protection in a Design Patent is limited. It keeps someone from knocking off the novel elements that make up a product’s look, but that’s it. It doesn’t protect the function at all. And even the aesthetic design protection is really narrow. It is slightly more expansive than exact copying, but not by a lot.

If a Utility Patent is possible for a new product, then a Utility Patent is best. Even a narrow Utility Patent tends to provide more protection and get more respect from competitors than a Design Patent.

But in many product areas and with many business models, aesthetics really are a distinguishing aspect of the new product and having strong protection against direct knock-offs is appealing. A Design Patent can work wonders, and at a fraction of the cost of Utility Patents.

WARNING: “inventor assistance programs” and similar businesses that claim they will help you patent and sell your invention often use Design Patents and Provisional Patents to make it seem like they are patenting your invention for much less money than patent attorneys charge. As you can see from the article above, a Design Patent is not at all equivalent to a Utility Patent. If it sounds too good to be true, it probably is.