Protective measures Featured

10:27am EDT August 20, 2004
If you own a registered trademark, do you know which of the following statements is true? You should.

1. By filing a single trademark application in English with the U.S. Patent and Trademark Office, a U.S. company can also have its application filed in over 60 foreign countries.

2. The Company for Publications and Information Anstalt, working with the Registration to the Publication of Brand Names of the International Economy, offers a one-step procedure for registering and renewing trademark registrations in several countries, including the U.S.

Although it may sound too good to be true, statement 1 is true. There has been a lot of buzz recently in trademark circles about an international treaty called the Madrid Protocol. In November 2003, the U.S. implemented the Madrid Protocol, which provides U.S. trademark owners a streamlined system for filing applications in more than 60 countries and jurisdictions who are members of this treaty.

The U.S. Patent and Trademark Office and the World Intellectual Property Organization work together under this system.

Both organizations host Web sites that provide information about the Protocol. For companies that do business in several foreign countries, the Protocol may provide a welcomed alternative to filing a separate trademark application in each country. Did you know that this alternative was available?

Statement 2 is false. The Publication of Brand Names of the International Economy does not exist and the Company for Publications and Information Anstalt is a phantom organization. It harvests the names and addresses of trademark owners from public records and sends the owners official looking invoices in English and in French kindly requesting remittance of a registration fee of $1,950.

Throw these invoices away! This is a scam. We have been contacted recently by several Indiana companies who have received these invoices. Follow their lead and question any unsolicited mailing that requests you to pay money in connection with your trademark registrations.

Federal trademark registrations in the U.S. are issued by the U.S. Patent and Trademark Office.

If a trademark attorney is handling an application for you, any correspondence during the application phase will be sent directly to him. The U.S. Patent and Trademark Office sends out no further correspondence after the registration is issued.

Trademark owners filed nearly 225,000 U.S. applications in 2003. We live in an information age and anyone with an Internet connection can access information about you and your marks.

Luckily, you can also use your favorite Internet search engine to check out any organization that sends you a trademark mailing. A search for the Company for Publications and Information Anstalt will direct you to several articles identifying this organization as running a scam.

Other organizations also send unsolicited but official-looking invoices to trademark owners. For example, an entity called the United States Trademark Protection Agency out of Seattle sends “urgent” notices for “service registration.” The mailings are actually offering trademark watching services, which are optional and not a requirement for trademark owners.

As these organizations are pressured, similar “entrepreneurs” hoping to make a quick buck off unwary trademark owners may take their place. Therefore, be cautious. Alert your accounting personnel that trademark invoice scams are afoot. Check with your trademark attorneys before responding to any correspondence or paying any invoice relating to your registered trademarks.

Sue Michael is an attorney in the Bose McKinney & Evans Intellectual Property Group, concentrating in trademark, copyright and licensing matters. Reach her at mmichael@boselaw.com or (317) 684-5451.