At least once a month, clients send me urgent messages that they received notices that appear to be official government correspondence about their trademark applications or trademark registrations. Typically, these notices (sometimes even in the form of an invoice) demand the payment of various fees to insure their trademarks are in compliance. However, on a quick review of these notices, it becomes immediately apparent they are all bogus. In the last several years there has been a growing cottage industry of private companies trolling for customers by using misleading trademark “notices.” They often charge fees for services that are not necessary or are often inflated from the official government fees. The problem has become so pervasive that the actual U.S. Patent and Trademark Office (the “USPTO”) held a public seminar last month on the matter and devotes a page to it on the actual, official USPTO website to educate the public.
The notices sent by these companies have an “official” look and with “official” sounding names. They often include official government data about the trademarks indicated. This data is part of the public record and is freely available for anyone to access at the USPTO website. Sometimes these companies will offer services in doing official filings with the USPTO, e.g. responding to a refusal to register, doing a trademark maintenance filing, or doing a registration renewal. Other times, they may offer to register your trademark on an artfully disguised “official” private trademark registry. However, private registration on a private registry will confer absolutely no legal rights under the U.S. Trademark Law.
There is one very basic principal about trademark notices. The USPTO will not send notices directly to trademark owners unless they filed their own trademark applications without an attorney. Where an attorney is retained to file trademark applications, he or she will be designated by the USPTO as the attorney of record and the “correspondent” to whom the USPTO will send all notices (unless the correspondent is expressly indicated otherwise on the record). If you are represented by counsel, then you will not receive notices from the USPTO, except in three limited instances all of which involve administrative litigation: if another party formally opposes your trademark application you will be served with the notice of opposition; if a party is trying to get your trademark registration cancelled, you will be served with a petition for cancellation; and in rare instances, if a another party seeks to have their trademark officially co-exist on the Registry with your trademark, you will be served with a concurrent use proceeding. Other than those three instances, all notices regarding trademark maintenance filings and renewal filings will be sent to the attorney of record.
In short, if you retained a trademark attorney to register your marks, and you receive one of these official-like notices, throw it away. Your attorney will advise you about any trademark deadlines or any actual official notice that he or she may receive from the USPTO. The USPTO encourages people who believe they have been misled by these trademark-related notices to contact the Federal Trade Commission to file a complaint. People can access information about filing a consumer complaint at the FTC with the following link: https://www.ftc.gov/faq/consumer-protection/submit-consumer-complaint-ftc. The following links provide samples of the bogus “official” notices from these trademark companies; there are many others:
Patent & Trademark Agency in NYC: Patent__Trademark_Agency
The Patent & Trademark Resource Center in Seattle: Patent_and_Trademark_Resource_Center
The Trademark Compliance Center in Alexandria, Virginia: TM Compliance Resource Center
The United States Trademark Registration Office in Los Angeles: Trademark_Registration_Office
The U.S. Trademark Compliance Office in Wilmington, Delaware: us_trademark_compliance_office_de