By: Erin E. Kaprelian
The number of scam notices received by trademark owners after filing a trademark application has continued to be on the rise and present a real problem—in fact, this activity is so rampant that it is now considered to be reaching epidemic proportions. These notices often appear extremely official. Examples of scam notices could include a facsimile of the United States Patent and Trademark Office (USPTO) logo, notices mimicking the look of actual communications containing a reference to an owner’s specific trademark application serial number and a description of the mark, and have very authoritative sounding names (such as “Patent and Trademark Office”, an actual name used by multiple of these scam agencies). The notices often request payment for renewal or offer to record the owner’s trademark in a private registry (which does not exist in the United States)—for a monetary payment. A request for payment is, generally, the biggest tip-off that the notice is a scam.
The USPTO is aware of the proliferation of scam notices and is continuously trying to combat it. The official USPTO website contains a webpage regarding these notices, including an educational video, as well as a list of names of common offenders. The USPTO further encourages anyone who receives such a notice to report it to the Federal Trade Commission (FTC), as the FTC is the agency with the authority to prosecute offenders.
If you did not use an attorney to file your trademark application, it can be difficult to discern what is official and what is not. The best way to ensure that you are responding to something legitimate is to be vigilant about checking your trademark application status on the USPTO website—it includes deadlines for responses, fees, and any other information you would need to fully implement your trademark. In addition, for e-mail solicitations, it is imperative to check the domain name sending you the e-mail; if it is not from “uspto.gov”, it is not legitimate. And, you can always contact an intellectual property attorney to assist you through the process, even if you have already filed the application on your own.
If you used an attorney to file your trademark application, a choice we highly recommend, you can safely disregard any notices you receive that seem to be from the USPTO. This is because, by having an attorney listed on the trademark record, the USPTO will communicate directly with the attorney—and only with the attorney—regarding Office Actions, deadlines, and any other outstanding issues with your trademark application.
If you have questions about the veracity of a mailing you received or about this article, please reach out to your Davis|Kuelthau, s.c. attorney, the author linked above, or the related practice group chair linked here to confirm that it is, indeed, a scam notice.