Sections
INTA Bulletin


November 1, 2015 Vol. 70 No. 19 Back to Bulletin Main Page

Trademark Mail Fraud Indictment in California


In order to retain the benefits afforded by a federal trademark registration, owners of U.S. registrations are required to satisfy certain ongoing requirements, including the submission of maintenance documents and associated fees. Although registrants can submit the required documentation and fees directly to the United States Patent and Trademark Office (USPTO), numerous companies unaffiliated with the USPTO routinely send solicitations to trademark owners with offers concerning their registrations. These offers range from various trademark monitoring and other legal services to recording trademarks with U.S. Customs and Border Protection, along with offers to “register” trademarks in the company’s own private registry. While some such companies may provide legitimate services, many do not.

Attempting to create the appearance of an association with the USPTO, these companies may use names that include one or more of the terms “United States,” “U.S.,” “Trademark,” “Patent,” “Registration,” “Office” or “Agency.” Because trademark filings in the United States are a matter of public record, these companies may also use the USPTO’s online database to access relevant information, such as the USPTO application serial number and registration number, International Class(es) and filing dates, along with the trademark owner’s name and address. Using this data, some companies have attempted to trick trademark filers into paying fees for unnecessary services by making their solicitations closely mimic the look of official government documents rather than the look of a typical commercial or legal solicitation by emphasizing the USPTO application, registration number or the filing date of the application.

Over the years, the USPTO has taken steps to educate trademark owners about non-USPTO solicitations that target trademark owners by posting, on its website, articles and videos concerning non-USPTO solicitations, along with examples of non-USPTO solicitations about which complaints had been filed. In addition, the USPTO has worked closely with U.S. Attorney’s Offices and other federal, state, and local agencies to ensure that the information necessary to identify and prosecute those companies engaged in fraud is readily available.

Artashes Darbinyan and Trademark Compliance Center
As part of the ongoing efforts to prevent companies from using deceptive practices to encourage trademark owners to make payments for unnecessary services, on October 9, 2015, Artashes Darbinyan, 35, of Glendale, California, was charged in the Central District of California with 12 counts of mail fraud and four counts of aggravated identity theft for his role in a mass-mailing scam targeting holders of U.S. trademarks.

According to the indictment, from September 2013 through September 2015, Darbinyan operated and controlled the Trademark Compliance Center (TCC) (also known as Trademark Compliance Office (TCO)), which purported to offer trademark registration and monitoring services. The indictment alleges that, through TCC and TCO, Darbinyan sent mass solicitations to holders of trademarks recently registered with the USPTO offering, for a fee, to register the holders’ trademarks with U.S. Customs and Border Protection, which uses an intellectual property rights recordation database to screen and block imports of infringing products, and to send users of its service regular reports of potentially confusing or infringing marks. The solicitations, which purported to come from TCC and TCO, were formatted to look like official invoices, and listed the trademark holder’s name and address, along with the name of the mark and the USPTO serial number for the trademark. According to the indictment, Darbinyan never provided the promised services, and, at the time he sent the solicitations, or caused the solicitations to be sent, did not intend to provide such services.

The indictment alleges that, to perpetuate the scheme and to avoid detection, Darbinyan used the names of other persons to open accounts for TCC and TCO at “virtual office centers” (i.e., businesses that offer further call-answering and mail-forwarding services) in the Washington, D.C., and Los Angeles areas and included envelopes with the solicitations, pre-addressed to TCC and TCO at the virtual office centers in the D.C. area, for the trademark-holder to submit the fee for the identified services. Darbinyan directed employees of the D.C.-area virtual office centers to forward mail addressed to TCC and TCO to the L.A.-area virtual office centers. Darbinyan allegedly retrieved the forwarded envelopes, deposited the checks from trademark holders for TCC’s and TCO’s trademark registration and monitoring services into bank accounts that he controlled and kept the proceeds.

To further effectuate his scheme and hide his role in it, Darbinyan regularly changed phone numbers, communicated via multiple fraudulent email addresses, created websites for TCC and TCO, set up VoIP phone lines for TCC and TCO and logged in from wireless ISPs, which are hard to trace to individual devices and users. According to the indictment, the alleged offenses resulted in proceeds of USD 1.85 million.

As part of its efforts to educate the public about USPTO requirements and protect against this type of fraudulent activity, the USPTO has urged trademark owners to thoroughly review all correspondence information to confirm that they are dealing with the USPTO rather than a third-party service provider. The USPTO has noted that all official physical mail correspondence concerning a U.S. trademark will come from the “United States Patent and Trademark Office” in Alexandria, Virginia, and all official email correspondence will be from the domain “@uspto.gov.” The USPTO has reminded all trademark owners that if they receive notices concerning their U.S. trademark that do not come from the USPTO’s physical or domain address, or if they are asked to return payments or filings to an address that is not the USPTO’s, the trademark owner is corresponding with a third-party private company, and any correspondence is being sent to that private company and not directly to the USPTO.

Although the USPTO cannot assist trademark owners who have been misled into paying money or signing up for services based on a misleading communication, the USPTO encourages recipients of deceptive trademark-related solicitations to contact the Federal Trade Commission (FTC) along with their state’s consumer protection authorities, which have the authority to issue investigative subpoenas and file complaints against companies engaged in deceptive practices directed toward state residents.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2015 International Trademark Association