Don’t be duped by the trademark solicitation

published in McAfee & Taft tIPsheet | August 7, 2017

By Michael J. LaBrie

The number of companies soliciting trademark renewals and other products or services from trademark registrants has skyrocketed. Why? Because the solicitations are effective in duping trademark owners into thinking the fees are required by the U.S. Patent & Trademark Office (USPTO) or other government agency. In fact, those fees are going into the pockets of the soliciting entity.

The soliciting company’s name sounds official or governmental: Patent & Trademark Association, Trademark Compliance Center, Patent & Trademark Bureau, USTM Information Services, Trademark Renewal Service, Trademark Registration and Monitoring Office, etc. The notices (accompanied by what appears to be an invoice for a “fee”) look like an official form because they include publicly available information from USPTO records. Buried in the fine print is often an indication that the soliciting companies are not affiliated with the USPTO or government, the form is an offer, and the services are optional. Of course no refunds are available.

Sometimes these types of companies offer to renew a trademark registration. Other solicitations offer to publish, monitor, protect, watch or register a company’s trademarks, domain names or other intellectual property. The solicitations are often timed to correspond with a renewal deadline or payment window. Historically many of the companies are based in the United States; however, some are based in foreign countries like the Czech Republic, the Slovak Republic, Hungary and Poland.

At best, the company offering the services will provide the service, often at an inflated price, and sometimes replace the trademark owner’s attorney with the soliciting company as the trademark owner’s representative at the USPTO. At worst, the company will take the money and provide no services, incorrectly provide the services and botch the renewal, or provide unnecessary services such as “publication” in a worthless online catalog.

The solicitations have become so prevalent the USPTO and Federal Trade Commission (FTC) have issued warnings about misleading notices:

For companies that pursue international patent and trademark protection, the World Intellectual Property Organization (WIPO) has also issued warnings and published a list of companies that have sent “invitations to pay fees”:

Some, but little, progress has been made against solicitation companies. Late last year, the U.S. Department of Justice announced that, with the cooperation of the USPTO, two California men pled guilty to stealing approximately $1.66 million from trademark applicants and registrants through companies called Trademark Compliance Center and Trademark Compliance Office. Also, a New York law firm obtained a final consent judgment against Patent & Trademark Agency LLC by which it agreed to permanently discontinue marketing and selling trademark registration or renewal services in the United States. Last month, another law firm sued Patent & Trademark Association Inc. in federal court in New York for unfair competition and false advertising related to solicitation notices.

Be skeptical of third party correspondence received relating to trademarks and intellectual property. Be even more skeptical of third party invoices, even if they look official and legitimate. While rare, it is possible to receive communications directly from the USPTO. For example, a petition to cancel is mailed directly to the trademark registrant. Also, WIPO and some foreign countries may mail communications and registrations directly to the applicant/registrant. If there is ever a question about whether a particular communication is a solicitation or official, or whether a particular vendor is legitimate, please contact the McAfee & Taft intellectual property attorney of your choice.