FEDERAL TRADEMARK SCAM WARNING: 3 THINGS TO DO
By Pacer K. Udall
December 5, 2019
When a federal trademark application is filed with the United States Patent and Trademark Office (USPTO), the filing receipt confirmation gives the following warning:
Warning about private companies offering trademark-related services. Private companies may send you communications that resemble official USPTO communications. These private companies are not associated with the USPTO. All official correspondence will be from the “United States Patent and Trademark Office” in Alexandria, Virginia, and from emails with the domain “uspto.gov.” If you are unsure about whether the correspondence is from us, check your records in our database, TSDR. Visit our website for more information on trademark-related communications that may resemble official USPTO communications.
While I have seen private companies try and solicit trademark applicants while their applications are pending, these solicitations really come in full force once a Registration is about to issue or after it issues when maintenance actions are coming due. Over this past year, this unscrupulous practice has become increasingly worse.
The USPTO provides a lot of information to consider about this practice on their website. Here are my takeaways relating to specific experiences many of my clients have endured this year.
These unscrupulous private companies make it difficult for you to talk with, contact or visit them. Often they just have a PO Box for an address, 1 (800) or 1 (866) phone numbers, and an “[email protected]…” email address. When you can talk with them over the phone, they mislead people into thinking that they might be an actual USPTO employee.
Their websites and written communications are also deceptive. They try to “look and feel” like the USPTO. They use a generic, government-looking font for example. Don’t be fooled by company names that sound like government agencies. Often they have the words “United States”, “U.S.,” “Trademark,” “Registration,” “Office,” “Agency”, or some combination of the foregoing in the name of their business to trade on the name of the USPTO and deceive people into thinking they either are the USPTO or sponsored, affiliated, or related to the USPTO.
They regularly put language in their written communications to scare a trademark owner into thinking their registration is on the verge of expiring. In fact, the written communications are usually sent out months before the one-year window to even file the required maintenance action opens. Even after the one-year window, trademark owners still have a six-month grace period to file. It is never as urgent and dire as trademark owners are led to believe.
Often they make it seem like they do things for less. They lure people in by disclosing only their fees and not disclosing the cost for the required government fees. Yet the fees they charge are the same or even more than what a typical attorney would charge in attorney fees for providing the same service. The unsuspecting client thinks they are getting a great deal until later, after the company leaves them on their own to go and file the documents they helped them prepare (if they are lucky), they are surprised to find out they have to pay a USPTO government fee.
Also, be aware of offers that contain government data publicly available from USPTO records. Just because the solicitation includes correct information about you and your trademark doesn’t mean you need to trust the company that sent it or buy their services. Correct information is only used to get you to buy into the services they are offering. The worst of these companies offer services that are completely unnecessary or even illegitimate. For example, some companies offer to record trademarks in private registries in European countries.
Please understand that the USPTO cannot help you if you fall prey to one of these dodgy companies. The USPTO states on their website: “The USPTO is not an enforcement agency. We don’t have the legal authority to stop private companies from sending trademark-related offers and notices, nor can we sue or prosecute entities that defraud or attempt to defraud our applicants and registrants.”
So, what should you do if you receive one of these trademark-related solicitations?
First, hopefully, you have hired an attorney to navigate you through the federal trademark process. Remember that they have power of attorney and are the correspondent for your federal registrations and applications. All official correspondence from the USPTO would be directed to them. If they did not send you the communication, just ignore it.
Second, if you can’t bring yourself to ignore the solicitation and still have questions or concerns, then contact your attorney and get advice before you do anything. Remember, neither the USPTO nor your attorney can help you get a refund from a private company if you paid money or signed up for services based on one of these solicitations.
Third, file a consumer complaint with the Federal Trade Commission (FTC). The more people that file consumer complaints the better. The FTC can only begin investigations and prosecutions based on widespread complaints about particular companies or business practices.