Registering a New Business or Trademark: Watch out for Scams!

Sep 28, 2020 | Blog
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When forming a new business, two of the first steps you will most likely need to take will be to 1) register the business with the Secretary of State of the business’ state of formation and 2) register any trademarks you’re planning to use (e.g., a name, logo, or slogan) with the United States Trademark and Patent Office (USPTO) and, if necessary, the European Union Intellectual Property Office (EUIPO). Once these registration applications are filed, however, it’s important to note that they become available on public databases and are therefore accessible by anyone. This has given rise to a rogues gallery of scammers, posing as private companies who offer various filing or monitoring services under the guise of an official organization to take advantage of unsuspecting new business owners.

Those who have recently registered a new business entity will often receive an official-looking “Certificate of Status Request Form” in the mail from some type of “certificate service” company. The form typically claims that the registrant must pay an additional fee in order to obtain a Certificate of Status from the Secretary of State (also called a Certificate of Existence or a Certificate of Good Standing) in order to take out loans, renew a business license, or for tax purposes.

While Certificates of Status are legitimate and are often required in some situations, they should only be obtained directly from the Secretary of State’s office or website, not through an untrusted third-party vendor. Certificates of Status are also not necessary for your business to be considered a valid legal entity.

Persons who have recently registered trademarks may also receive solicitations that claim to offer assistance with certain filings, trademark renewal, or recording trademarks in a private registry. The U.S. Patent and Trademark Office never requires you to use the services of any private companies and their official correspondence will come from Alexandria, Virginia or the email domain “@uspto.gov.” A list of phony agencies claiming to provide services regarding U.S. trademarks and patents can be found here.

Another pervasive scam targeting new trademark registrants is the sending of an invoice requiring a fee for “international trademark registration.” However, the World Intellectual Property Organization (WIPO) is the only official body governing international intellectual property and is a specialized agency of the United Nations. The EUIPO has recognized this growing problem and has provided guidance here. WIPO also warns that fake invoices typically come from agencies with names similar to theirs, such as the “World Patent & Trademark Agency,” “International Patent and Trademark Agency,” or “Intellectual Property Register Services.” WIPO also provides a list of scamming international agencies here.

Be forewarned that these groups will go to great lengths to make their documents seem official in appearance using seals, barcodes, document ID numbers, addresses, due dates, and entity names similar to the names of the official document. However, the source of the document should always be checked and verified as a legitimate, government-sanctioned organization. Another red flag is a request to wire fees into banks in locations with no connection to the organization being imitated, such as Eastern Europe, Malta, Panama, and China. Always consult an attorney if you’re unsure about the source or legitimacy of a document and never send any type of fee payment without consulting your attorney first.

If you have any further questions regarding the proper registering of businesses and trademarks or whether you have received a proper fee request, please contact Eric Breitman.