The recent focus on fake news should remind trademark owners of the special care they need to take with communications about their trademark applications.
As the U.S. Patent and Trademark Office (USPTO) recently warned, a number of private companies regularly try to fool trademark owners with official-looking solicitations that issue dire warnings about the vulnerabilities of a company’s unprotected trademark. These companies mine public information about trademark filings, and then direct solicitations to trademark applicants, most often suggesting that they are an official government agency.
These fake solicitations often request “fees” to be paid, and, as the USPTO noted, “Some applicants and registrants have reported paying fees to these private companies, mistakenly thinking that they were paying required fees to the USPTO.”
Many of these entities use names that are meant to confuse, like “U.S. Trademark Compliance Office,” “Patent & Trademark Bureau,” and “Patent and Trademark Agency.” None has any official connection to the real U.S. Patent and Trademark Office. (A USPTO advisory lists a number of these misleadingly named entities.)
The International Trademark Association has warned about these services. It has explained, “Armed with your trademark, name, and address and similar information for thousands of other trademark owners, these companies mass-mail or email an official-looking form requesting the payment of fees (usually an odd amount, such as $587.00) to ‘publish’ or ‘register’ your trademark. The services they offer often are unnecessary or duplicate the services provided by the government trademark office. In other situations, the mailing may offer what might otherwise be a legitimate service (e.g., a trademark watch service), but under false pretenses (e.g., by using a name, such as ‘USTPA,’ that sounds like an official government agency).”
The USPTO also warns trademark applicants about these services, and it maintains an active webpage and video warning of unofficial solicitations “that may resemble official USPTO communications.” Individuals and companies that are new to the trademark registration process, in particular, should check out these offerings.
In a few extreme cases, deceptive practices preying on trademark applicants have led to criminal charges. In December, the Department of Justice reported that a defendant pleaded guilty to mail fraud and money laundering charges based on a scheme in which his company promised to monitor an applicant’s trademark for infringing marks, and register the trademark with U.S. Customs and Border Protection, even though it never did any of those things. All it did was collect more than $1.5 million in improper “fees.”
As Commissioner for Trademarks Mary Boney Denison noted in her recent post, “A registered trademark is a valuable asset, and where there’s money, unfortunately, there are bound to be criminal elements lurking.”
Although we would like to hear from you, we cannot represent you until we know that doing so will not create a conflict of interest. Also, we cannot treat unsolicited information as confidential. Accordingly, please do not send us any information about any matter that may involve you until you receive a written statement from us that we represent you (an ‘engagement letter’).
By clicking the ‘ACCEPT’ button, you agree that we may review any information you transmit to us. You recognize that our review of your information, even if you submitted it in a good faith effort to retain us, and, further, even if you consider it confidential, does not preclude us from representing another client directly adverse to you, even in a matter where that information could and will be used against you. Please click the ‘ACCEPT’ button if you understand and accept the foregoing statement and wish to proceed.