Be on the Lookout for Potentially Misleading Trademark Solicitations

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If you own a U.S. trademark registration, chances are you’ve received official-looking solicitations offering to handle trademark services on your behalf in return for a fee. Read these notices carefully – more often than not, they don’t come from the United States Patent and Trademark Office (USPTO). Instead, they’re sent by private companies that have obtained your contact information from the publicly accessible USPTO trademark database. Worse than that, these notices may ask trademark owners to pay thousands of dollars in fees in exchange for services that aren’t even timely or necessary.

Think you may have received one of these solicitations?

  • Was the solicitation sent by a company with an official-sounding name, often containing some combination of the words “Patent,” “Trademark” and “Office?” You can check the USPTO’s web site here to see if anyone has already filed a complaint about the entity that sent your solicitation.
  • Does the notice look like an invoice, or display what appears to be a barcode?
  • Does the notice contain alarming wording, such as “Your Trademark is about to Expire?” (Don’t worry – such notices often list incorrect deadlines, so your registration may not require any filings for another year or more.)
  • Does the solicitation offer to renew your trademark registration, add it to a private directory, or handle some other service – all in return for a significant fee?

If you answered “yes” to one or more of these questions, you might have received a notice from a private company regarding a service you don’t need – so it’s important to take a closer look. These notices can look pretty official, so it’s no wonder trademark owners have been misled into sending money to these private companies. When in doubt, it doesn’t hurt to double-check with your trademark counsel to confirm whether the action suggested is required. For example, in the United States, you don’t need to “publish” your trademarks in a private directory. There is no advantage in doing so.

Remember that all official correspondence from the USPTO will come from the “United States Patent and Trademark Office” in Alexandria, Virginia with an email address ending in “@uspto.gov.” If the solicitation you received lists a different company, physical address or email address, you may be able to disregard it.

If you want to take additional steps, the USPTO encourages trademark owners to send any solicitations they’ve received to TrademarkAssistanceCenter@uspto.gov. While the USPTO can’t help trademark owners obtain refunds of fees paid to these entities, the USPTO may add your notice to its existing database of potentially misleading offers, which it makes available to the public for purposes of educating others about this issue. The USPTO also suggests filing a complaint with the FTC or a state consumer protection agency.

Although misleading solicitations are an unfortunate reality, you can help protect yourself by reviewing any notices you receive with a skeptical eye, and asking trademark counsel to confirm whether any action is needed. We also suggest alerting the staffers who read your company’s mail and your accounting department to help reduce the risk that official-looking invoices will be processed for payment.

This entry was posted in Brand Management, Brand Protection, Branding, Trademark Portfolio Management, Trademark Prosecution, USPTO Tips and Tricks.
Date Published: October 10, 2019
Kelly M. Horein is an associate on the Trademarks team of the firm’s Intellectual Property Practice Group. Kelly’s practice encompasses all aspects of brand management, including domestic and international trademark clearance, registration, and enforcement. When litigation is necessary, Kelly assists clients with disputes, including trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office, and trademark litigation in federal court. In addition, Kelly prepares and negotiates intellectual property agreements, counsels businesses on website development and social media issues, and assists them with assessing product packaging for compliance.