How To Avoid Trademark Scams
By: Elias Borges, patent & trademark lawyer.
I have been practicing trademark law for over 20 years now, and during that time, I have come across a number of trademark related scams. Here are a few:
Bogus Trademark Office Invoices:
Every few years, my clients and I receive a series of documents, usually from an overseas company, which purports to be an invoice from an official trademark’s office. The invoice will list a bona fide trademark application which was recently filed by the client and will include a deadline by which the fee must be paid or else the trademark application will expire. The amount of these invoices is often quite high, often in excess of several hundred euros (or US dollars). The client, thinking that they are dealing with the trademarks office or a law-firm, will unwittingly pay the invoice. The invoice, and the company submitting the invoice, is totally bogus. The trademark’s office does not generally issue invoices to clients, and any invoice you receive from your lawyer will generally have the law-firm’s name on it. I generally tell my clients that if they receive any invoice or correspondence concerning their trademark (or trademark application) to notify me. I every case, the invoice has turned out to be a scam.
Bogus Cease and Desist Letters:
Every once and I while a client comes to me and shows me a “cease and desist” letter from a competitor’s lawyer warning the client to stop using a particular trademark. The client is of course quite upset and nervous, and is inclined to stop using the mark in order to avoid further legal action. However, a quick trademark register search reveals that the competitor has not registered the trademark. Furthermore, a review of the “trademark” indicates that, in all probability, the mark lacks distinctiveness and probably can not be registered. It’s always a good idea to consult a trademark lawyer before acting on any “cease and desist” letter.
"Discount" Trademark Search and Application Services:
By law, only a registered trademark agent can file and prosecute trademark applications on behalf of a client. Furthermore, only a trademark lawyer can provide you with a legal opinion as to whether or not your proposed mark infringes on a registered trademark. Despite this, there are a number of trademark “advisory” services which advertise the ability to perform trademark searches or file trademark applications at a very low cost. Upon closer inspection; however, it is apparent that all these services actually do is fill-in a form (actually, you do the filling-in - they just paste your information into an electronic form and submit it to the trademarks office). They don’t revue the application for obvious flaws. They don’t review the proposed trademark for suitability. They don’t scrutinize the statement of goods or services to be used in association with the mark to ensure that it will pass the trademark’s offices standards. They don’t even provide you with basic advise on how to avoid common trademark problems. All they do is fill-in a form which is freely provided by the trademarks office. Why anyone would pay an organization $100 or $200 for simply filling-in an online form is beyond me. Nevertheless, these organizations seem to make a living.
If you want more information relating to trade marks, Canadian trade mark applications, logos and more, please check out our trademark information page or give us a call.