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Beware Trademark and Domain Name Scams
- 3/31/2011

Ostrolenk Faber LLP wishes to issue a warning to its clients of two types of scams that have been surfacing recently and with some regularity.  In particular, beware of fake Trademark Office notices and fake warnings of usurpers of Internet domain names.  We address each below.

Phony “Trademark Office” Notices.  Often, these are official looking documents from “The United States Trademark Agency” or some similar name, and are typically sent to individuals and first-time trademark applicants via postal mail.  These notices may offer to list your trademark in a directory for a fee, or may offer to monitor the progress of your trademark application for a fee.  The fee may be as high as a few hundred dollars.  Don’t fall for this ruse.

The United States Patent and Trademark Office (PTO) communicates only with the “correspondent” for the application, which is often your designated attorney.  Therefore, if your application was filed by Ostrolenk Faber or another law firm, the PTO will send notices only to that  firm; it will never communicate directly with the applicant.  Nor will the PTO solicit fees.  Payments to the PTO are made only when a specific service is utilized, e.g., filing the application, filing a Statement of Use, or the like.  Also, fees are paid by the correspondent only at the time the particular filing is made. 

Warnings of Domain Name Usurpers.  These are warnings, usually sent by e-mail, from a Internet “domain name registrar” (often based in China).  The warning states that a particular company has requested registration of several Internet domain names that incorporate your trademark.  Usually, the domain includes your trademark and a regional or country top level domain such as .cn, .tw, .hk, or .asia.  The domain name registrar then offers you the “opportunity” to register these domain names before the company grabs them.  Our experience has been that no such company exists, and the only objective of the notice is the collection of domain name registration fees for the domain name registrar.

In the event that someone does register a domain name using your trademark, there are legal channels for you to pursue.  The World Intellectual Property Organization (WIPO), for example, administers a proceeding for mandating the transfer any domain name registered in bad faith to the trademark owner.

Be on the lookout for these and other scams that circulate by e-mail and postal mail.  As always, ask your intellectual property attorney before responding to any offer or warning, particularly when a fee is involved.  Ostrolenk Faber LLP is happy to assist you with any of these or similar scams that you may receive.  We will report more of these kinds of scams as we become aware of them.