Oftentimes, Oliver & Grimsley will hear from our trademark clients about letters they received regarding their marks coming from what appear to be official sources. These letters will ask that clients make a payment, upwards of hundreds of dollars or more, and indicating their marks are about to expire, or offering to provide some other service such as adding the mark to a directory. These letters are all under the guise of being from “The United States Trademark Center,” or even the “Patent and Trademark Office,” which are third parties that are unaffiliated with the United States Patent and Trademark Office. When we hear from a client of ours about these letters, we know that the letters are from companies that have no connection with the official U.S. Patent and Trademark Office; rather, these are companies that are attempting to mislead new trademark applicants and registrants into thinking the notice is official, and trying to scam trademark holders into paying hundreds of dollars or more to them for unnecessary or overinflated services.
If you have filed for a federal trademark registration on your own, it can be very difficult to know what is legitimate. Any correspondence regarding deadlines is sent from the United States Patent and Trademark Office (USPTO), and is typically sent via email with an @uspto.gov email address. If you have an attorney of record listed on your trademark application or registration, and your attorney is listed as the attorney of record and the correspondent on your application, official communications from the USPTO will go directly to your attorney of record on your behalf rather than being sent directly to you. Thus, in this situation, it should be a red flag if you receive a notice, as your attorney should be receiving all communications from the USPTO for you. In addition, these companies will sometimes try to use similar names to the USPTO to purposefully confuse any recipient. Below are some examples of scam companies that the USPTO lists on its website:
In an attempt to curb the growing number of these scams, one step that the USPTO is taking is seeking federal trademark registration of its own name. Applications were filed by the Department of Commerce on the USPTO’s behalf to register “USPTO” and “UNITED STATES PATENT AND TRADEMARK OFFICE,” as well as applications for two design marks in order to cover the USPTO’s logos. By seeking federal trademark protection, the USPTO hopes to broaden its legal options for dealing with such infringers, as it warns that these scams are becoming more sophisticated as they multiply.
When you receive unfamiliar notices like the examples listed above that request money or any solicitation for services regarding your trademark, it is important to look into who exactly is sending it. You can check the link provided by the USPTO to see if it is one of these misleading scams they are already aware of, or a call to a trademark attorney can also be very helpful, as they will almost immediately recognize a scam. Also, know that if you have an attorney listed as the attorney of record and correspondent on your trademark applications or registrations, you should not be receiving such correspondence, as your attorney would be receiving all official communications on your behalf. In addition, if you have an attorney overseeing your trademarks, your attorney can assist by keeping track of your deadlines for you.
For more information about trademarks, please contact Kim Grimsley at kim@olivergrimsley.com or Jennifer Mumm at Jen@olivergrimsley.com.