Kevin Thompson quoted in article on International Trademark Scams

Kevin A. Thompson was quoted in the November 3, 2010 edition of the Chicago Daily Law Bulletin in an article written by Maria Kantzavelos entitled “Trademark Lawyers Warn of Scams.”

Here is the text of the article:

Trademark lawyers warn of scams
By Maria Kantzavelos
Law Bulletin staff writer

Michael R. Graham, a partner in the intellectual property firm of Marshall, Gerstein & Borun LLP, knows a thing or two about the value of registered trademarks.

Not only does he know this from the vantage point of a lawyer who has long focused his practice in trademarks, among other IP areas, but also as the owner of a trademark with Dad’s Gone Bad, the name of a rock band he plays bass and sings in.

“We registered it because we started to use it. You always have hopes of being able to use it broadly. Plus, with a website and domain name, it’s important.”

Graham said the band hasn’t had a gig in the past year, and so it hasn’t been able to renew the registration because registration requires a filing of a statement of use of the mark.

Still, he said, owning a trademark has helped him when it comes to being on the lookout for solicitors who may prey on fellow trademark owners — who may be his clients.

“It does help me see what types of information and mailings my clients who are trademark owners receive. Which, as an attorney, I would never receive. They specifically target the trademark owners and not the attorneys of record.”

Potential scams targeting owners of federal trademarks crop up from time to time, Graham said, especially around the time of an owner’s registration of a trademark and of the registration renewal dates — information that is available to the public.

“The renewal scams have gone on for years,” Graham said, referring to the services of solicitors who provide renewal services for a fee. “Usually, they look like some sort of invoice from the government. … In one case, where my client actually did try to use this service, it was incorrectly filed. That client believed they were getting good service until they receive the rejection. They were lulled into believing this was all they needed to do because it looked official.”

But Graham and other lawyers said trademark owners should also be on the lookout for solicitors who profess to publish marks in an international digest for a fee, or to register trademarks from “International Registries.”

Graham, along with his fellow partners in his firm’s trademark practice group recently sent out a notice to clients about what he considers to be a questionable solicitation that can tap into a trademark owner’s desire for international rights.

The notice highlights solicitations to register trademarks from two separate “International Registries,” one calling itself “Register of International Patents and Trademarks,” located in the Czech Republic, and the other calling itself “Register of International Patents,” located in Austria.

Both solicitors have websites (www.ript.eu and www.patentonline.org), and both include disclaimers pointing out that these are solicitations for a “private database” and that these private registrations are “not a registration by a government organization,” according to the firm’s notice.

Still, Graham said, the solicitations have the look of official trademark registration invoices and they profess that the marks will be published worldwide, giving the impression that signing on will help protect a trademark internationally.

“Especially if you’re a midsize company in the U.S. and you’re not very savvy with trademarks, it looks like something you ought to do because we all know that commerce is international,” Graham said. “This ‘registry’ idea that some people may believe is true, is not. The cost is pretty high and all you get, as I understand it, would be published in this particular journal.

“It is something that has been going on for some time,” he said. “There are organizations attempting to set up and profit from setting up ‘International Patent and Trademark Registries,’ and they claim that by registering with those and having your mark published, you’re going to strengthen your trademark or have international marks.

“The way you patent your mark internationally is: You register it, you use it, and you protect it. They make you feel that by publishing it you’re going to have rights, even if you haven’t registered it.”

Kevin A. Thompson, a member in Davis, McGrath LLC, where he serves as the firm’s international trademark expert, said he keeps a chart of “those sort of international scams” so that when they do pop up he can tell his clients to watch out.

“They try to trick people into thinking they’re official,” Thompson said. “For years, people have published their own international digests of trademarks. They have no use whatsoever. You pay a large fee, your mark is published in the book, but it has no effect whatsoever on the maintenance of the registration.”

Thompson said that today there is more awareness of solicitors of “International Registries.”

“I think people are starting to become more aware of them because we, as a country, are starting to do more international trademark protection,” Thompson said. “They’re starting to become more prevalent as U.S. companies are starting to own more international marks than they did in the past.

“I think they’re just recently starting to become more prevalent and online, so people see them more often,” Thompson said. “They rise to the level of scams when they actually start tricking people into doing it — they look official.”

Copyright 2010 Law Bulletin Publishing Co.  Reprinted with permission