As a trademark attorney, my clients often contact me about some solicitation that the client received in the mail, suggesting that they pay a hefty sum to have their trademark registered on some for-profit trademark list. These entities have lofty sounding names like the Patent and Trademark Institute, Intellectual Property Register Services, ITR, World Trademark Registry and Trademark Compliance Center, but they don’t confer any actual benefit on their customers. Anyone who receives one of these solicitations should exercise extreme caution for the following reasons:
First, these lists have no legal force or effect. A trademark that is “registered” on one of these lists has no more protection than it would have if it were not on the list.
Second, the vast majority of these lists have no value to anyone (except for the owners of the companies that compile them).
Third, attorneys and government trademark offices do not rely on or search these lists. They exist solely to generate fees from unsuspecting trademark owners.
Fourth, a government trademark office or a trademark attorney will only contact the attorney of record for the trademark owner, or, if no attorney is listed, then they will contact the trademark owner directly. (The only exception to this may be in a case of alleged infringement where the attorney complaining of infringement may contact the alleged infringer directly).
To be clear, these scammers are different from lower cost online filing services that operate in the United States, which can actually register your trademark with the U.S. Patent and Trademark Office — the only organization whose register provides legal protection in the United States.
The World Intellectual Property Organization (“WIPO”), which is an agency of the United Nations (and is legitimate), has compiled a list of of scammers here. (As an aside, a favorite of many trademark lawyers is the “World Intelligent Property Register.”) These fraudsters frequently change their names to avoid the authorities, but they do real damage. In 2017, the people behind Trademark Compliance Center and other fraudulent operations were sentenced to lengthy prison sentences and multimillion dollar fines.
If you are a trademark owner and you receive a direct solicitation about your trademark, chances are that it is a scam. Contact your attorney to confirm, If you send any money to an unknown entity claiming that it can “register” your trademark, you will probably end up with less than you pay for.
