Beware Trademark Invoice Scams

Trademark Invoice ScamToday a friend asked me about two invoices his company recently paid for “trademark registration” by very official-sounding entities in the Czech Republic and the Slovak Republic. He essentially wanted to know how frequently the company would be billed for keeping its marks registered. Unfortunately, I had to explain that his company had been misled, and that scam artists have been fleecing U.S. and European companies with this stunt for the last 2-3 years.

The misleading elements of┬átrademark invoice schemes vary. However, the targets are generally small businesses that have recently registered trademarks somewhere in the world. They receive an invoice that appears to be from a government agency, written in very confusing language evidently meant to look like legalese. The invoice demands payment of a fixed sum of money in exchange for something relating to registration of a trademark. In my friend’s situation, the “something” is explained in the small print of one of the invoices to be “registration of your international trademark application in our Internet database,” and in the other invoice to be “access of the client in the catalog on the provider’s portal.” From reading what others have reported on these schemes, it appears that the “registration” refers to including the trademark owner’s mark in the invoicing company’s privately-owned database. It does not mean that the mark will actually be registered in a public trademark office anywhere or that the fees will be used to maintain an existing registration.

Several official trademark offices have posted warnings about misleading trademark invoices:

OHIM Warning

USPTO Warning

WIPO Warning

There are similar schemes dealing with the registration of domain names. If you receive an invoice relating to trademarks or domain names, you should read it very carefully. If it contains the words “offer” or “solicitation,” the invoice is almost certainly not what it appears to be at first glance. Also, regardless of the language used in the invoice, you should research and attempt to contact the organization that sent it. You may also make an inquiry about the invoice with the public trademark office where you’ve registered your marks. And, of course, if you have access to legal counsel, have your attorney look into the validity of the invoice.

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