As we near the end of another year, I am sorry to report that the number of misleading solicitations and notices received by trademark applicants and registrants has become so prevalent as to be almost epidemic (maybe a poor choice of words at this time but you all know what I mean).
Information regarding trademark applications and registrations is readily available in the public records of the United States Patent and Trademark Office (USPTO), as well as international and foreign registers. Private companies use this information to send official looking notices of impending registration maintenance deadlines, opportunities for private registry or other database registrations, watch services and similar offerings — all typically warning of an urgent need to act or risk adverse consequences such as the loss of trademark rights. In some instances, the notice may appear as an invoice or bill suggesting that the payment of a fee is the only requirement for satisfying the subject matter of the notice. These notices maybe sent by mail, email or even text message.
At one time, these scams were relatively obvious. Messages sourced from a strange email address, using poor grammar and misspellings to communicate unclear purposes for requested information or payment — all of these were obvious tips that something was not right. Unfortunately, misleading and fraudulent solicitations have increased in sophistication as well as frequency.
Solicitations and notices for services relating to a registration or pending application usually come from an organization using an official-sounding name such as the “Patent and Trademark Office,” “Patent and Trademark Bureau,” “Trademark Compliance Center” or some other combination of words that appears to be government related. The notice will have accurate information regarding the subject mark and include official looking bar codes and logos in a format that is similar to or could be expected to come from a legitimate government source. Some may even include the official USPTO logo, or that of a legitimate international or foreign government registry. While these notices generally refer to an actual filing requirement, they are not always accurate about the timing of the requirement and the quoted fees are usually high, without specifying applicable government filing fees.
Many of these notices will state in very small print that the party sending the notice is a private company or that there is no obligation to use the sender’s services. However, the overall appearance and prominent language is clearly intended to suggest that the notice is official, and a return of the document with the payment will satisfy the filing requirements. Payment to these organizations does not itself satisfy any required payment of government fees, and there is no chance that the organization can or will make the necessary filings on behalf of the owner.
Trademark owners who use an attorney to file their trademark applications should not receive communications directly from the USPTO, and can simply discard any notice not received from their attorney. Attorneys handling these matters maintain a docket for routine deadlines (maintenance and renewals) and will provide timely notices; any communications from the USPTO (such as Office Actions in connection with the prosecution of an application or a third party opposition) will be directed to the attorney of record, who will notify the trademark owner of any required action.
Recognizing this practice, the private company solicitations typically are sent well in advance of compliance deadlines in order to beat the attorney’s notice. A recent solicitation brought to my attention by a client correctly identified the client’s mark and registration date in 2003, but claimed that renewal was due in 2020 — three years before the actual renewal deadline and two years prior to the time that a renewal could even be filed with the USPTO.
Where there is no attorney of record, the trademark applicant or owner will receive direct communications from the USPTO, and will need to be careful in examining any such notices to verify authenticity.
Anyone receiving a notice regarding official requirements for a U.S. application or registration should look for the following:
- Authentic notices (other than from your attorney) will be from the United States Patent and Trademark Office (no variations). Any other source should be ignored, but can also be checked against a list of known offenders maintained by the USPTO at https://www.uspto.gov/trademarks-getting-started/caution-misleading-notices.
- The USPTO Trademark Status & Document Retrieval (TSDR) database shows outgoing communication from the USPTO with respect to each trademark application/registration. The TSDR information is accessible at uspto.gov through the record for each mark. If the notice in question does not appear in the TSDR records, it did not come from the USPTO.
- If received by email and the domain is not “uspto.gov,” the notice is not legitimate. (An earlier alert from the USPTO advised that some notices from third parties appeared to come from a spoofed uspto.gov domain, but had other clues to their illegitimacy, such as a different mailing address and/or different email address for replies and payment).
- If a mailing address is anything other than the USPTO in Arlington, VA, it not legitimate.
- If payment is to be made to the sender, directly or through a designated bank or other payment service, it is not legitimate.
- Any purportedly official notice for a required registration or listing in a separate database or registry is not legitimate; official recordation is automatic with the filing of an application.
- Read the fine print. If it states that the sender is a private company, it is not from the USPTO.
Other clues include false or misleading information about deadlines (accurate information is available in the specific trademark records publicly available online at www.uspto.gov) or poor grammar, misspellings and typos.
The USPTO website page containing the list of common offenders (noted above) contains additional information regarding known scams, potentially misleading solicitations and other communications which have been the subject of inquiries or complaints. Sample solicitations from many of the names on the list, an educational video, and instructions for reporting the solicitation at TMScams@uspto.gov (for companies not already on the USPTO list).
The USPTO is not an enforcement agency and does not have authority to prosecute the perpetrators of these scams, but uses the information to raise the awareness of trademark owners and work with other government agencies to combat the problem. The USPTO also provides a link (www.ftc.gov.) to file a consumer complaint with the Federal Trade Commission (FTC), which does not resolve individual claims, but uses such information for investigations and prosecutions based on widespread complaints.
Trademark owners with international or foreign applications or registrations should be equally suspicious of any solicitations or notices related to their global marks and look for the same clues noted above with respect to purported USPTO communications. Official trademark agencies around the world have reported similar increases in the frequency and sophistication of misleading and fraudulent notices. Useful information, as well as the identity of some known sources of these scams, can be found at https://www.wipo.int/pct/en/warning/pct_warning.html and https://euipo.europa.eu/ohimportal/en/misleading-invoices.
But note: not all scam solicitations relate to official activity relating to the prosecution of an application or maintenance of a registration. Instead, they may offer “collateral” services such as registration or publication in a private or non-governmental database or publication. These notices will still tend to appear very official, and in many cases suggest a governmental, quasi-governmental or trade association source, and state that a registration is required or highly recommended in order to protect trademark rights in a named or unnamed jurisdiction. Not true.
While there are some legitimate private registries (such as Amazon), these registrations are optional and offered for specific purposes not related to the underlying validity or protection of a mark that is the subject of a valid application or registration with the appropriate government entity. Many of such databases do not actually exist, or if they do, offer no benefit.
Anyone receiving a questionable notice should review it carefully, and if in doubt about its validity, contact a trademark attorney.
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