Making a World of Information Work for You.
Avoiding Solicitations for Unnecessary or Fraudulent Trademark Services
When you file an application to register your trademark with the United States Patent & Trademark Office, the details of that application, including your and/or your company’s name and contact information, become public record as part of the USPTO database. All applications and registrations are freely searchable using the USPTO's Trademark Electronic Search System (TESS). One benefit of this is that it allows anyone to view the database of applications and registrations on file with the USPTO, which is useful when selecting or enforcing a trademark.
However, one unfortunate drawback is that there are many unscrupulous companies who use information from the USPTO to send official-looking notices to applicants, offering services that range from unnecessary to fraudulent. Because these solicitations frequently appear to be invoices from the USPTO or other government agencies, it is tempting for the applicant to pay for fear that failure to do so will jeopardize the application. In almost all cases, however, these solicitations can and should be safely ignored.
One of the most frequent types of solicitations is for listing the trademark in a trademark registry. A trademark registry is simply a collection, in either electronic or paper form, of registered marks and/or pending applications. The purported benefit of listing your mark in a registry is that third parties will consult the registry prior to using or seeking to register a mark similar to yours. Of course, there already exists such a registry - the USPTO database - and if you've filed an application, your mark is in it.
Here’s an example of a trademark registry solicitation received by one of our clients from a company based in Hungary:
As you can see, the notice looks very much like an invoice. Thankfully, the client contacted us before sending any payment, and we advised them to forward the notice to us and take no other action.
Unfortunately, some companies fall victim to these types of notices. A recent article in the South Florida Business Journal discussed actions being taken against the Federal Institute for Patent and Trademark Registry, who managed to receive nearly $2.6 million from companies such as Crocs and Sony Entertainment simply by sending official-looking invoices for services it never performed.
To avoid being the victim of these types of solicitations, remember:
The USPTO will send all official notices regarding your application solely to the attorneys of record for that application - notices sent directly to you are likely to be solicitations from third parties.
If you have any questions about any notices or invoices you receive in connection with your trademark application, consult with a trademark attorney before taking any action.