Editors Note: Jose Cortina is a member of the Research Triangle Park law firm of Daniels Daniels & Verdonik, P.A.

1. The Problem

U.S. owners of patents or registered trademarks may find themselves the target of sham letters regarding overseas registration of their patents or trademarks. The letters typically solicit payments for services which are of no value. The owners, if fooled, end up making payments of large sums of money and receive nothing of value in return.

2. The Targets

The companies issuing such letters have been around for a number of years promoting to patent owners the registration of patents on fictional international patent registers. The practice is so prevalent that the European Patent Office has issued a warning reminding the public that it alone has the authority to issue patents which provide legally enforceable rights.

More recently, because trademark registrations have become more important (particularly in connection with domain name disputes) the number of fraudulent solicitations directed at the owners of registered trademarks has increased significantly. The companies sending out these solicitations solicit payments for registration services which are also worthless as they confer no rights on the trademark owner.

3. The Schemes

Generally the solicitation is in the form of an official-looking form letter. The authors use intentionally misleading language and forms which look like official government documents. The solicitations generally: 1) offer to register patents or trademarks on fictional international registers; 2) invoice for registration of patents or trademarks on fictional registers; and 3) offer patent and trademark monitoring services. The more alarming notices advise patent and trademark owners that they will lose valuable intellectual property rights if they fail to act. In almost all cases, they do not go to the trademark or patent owner’s attorney or agent, but go directly to the owner of the trademark or patent.

4. The Players

Companies which the European Patent Office, the World Intellectual Property Organization, the Office of Harmonization in the European International Market and the Australian government have identified and about which have issued warnings include the following:

  • Institute of Commerce, Trade and Commerce based in Switzerland

  • Datenregister GmbH based in Frankfurt (letters in English, French and German)

  • Globus Edition SL of Palma de Mallorca, Spain

  • Company for Publications and Information Anstalt of Lichtenstein

  • European Institute for Economy and Commerce — EIEC based in Brussels

  • IT & TG of Switzerland

  • Edition The Marks KFT
  • In the United States, one company has issued correspondence entitled: “Trademark or ServiceMark Cancellation Alert”. This correspondence is issued without a company name on letterhead. The name of the company is in small font size as “Trademark Renewal Service, 910, 17 Street N.W., 8th Floor, Washington, D.C. 20006”. Since the U.S. Trademark Office is in Arlington, Virginia, the name and address could be misunderstood to be that of the U.S. Trademark Office.

    5. The Results

    Although many organizations, including the American Intellectual Property Law Association and others, have issued warnings and condemnations, the schemes continue to proliferate. The companies rely on corporate procedural flaws and lead companies and individuals to pay what appear to be “official” invoices from government agencies. It does not take many companies or individuals paying these invoices to create a profitable business.

    6. What to Do?

    Do not pay any unexpected invoices from U.S. or foreign services. It is not difficult for these companies to obtain the necessary information about patent applications or trademarks to generate official looking documents. Since most patent and trademark owners are represented by counsel, provide the mailing to your counsel and ask about the mailing. In a vast majority of cases, the notices are part of fraudulent schemes and your counsel is in the best position to be able to distinguish whether it is a fraudulent communication or a legitimate one. As a rule, the government agencies do not communicate directly with the patent or trademark owner, but do so through designated counsel.

    A. José Cortina is a registered patent attorney with the law firm of Daniels, Daniels & Verdonik. He focuses his practice on the intellectual property needs of small to large technology companies, including providing patent, trademark, copyright, counseling, licensing, conflict resolution and transactional services. He is experienced in a broad range of technologies, including electronics, communications, computer hardware and software, biomedical, materials, and selected chemical and chemical engineering technologies.