Trademark and Patent Owners: Beware Scam Solicitations Appearing to Be from the U.S. Patent and Trademark Office

McCormick Barstow LLP Attorneys at Law

Trademark and Patent Owners: Beware Scam Solicitations Appearing to Be from the U.S. Patent and Trademark Office

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Federal trademarks are registered by the United States Patent and Trademark Office (USPTO).  That office also issues patents upon an extensive application and review process.  Holders of these intellectual property rights might sit up and take notice if receiving emailed notifications appearing to be from the USPTO.

Taking a lead from a well-known form of internet scam (the official-looking “government notice” that in reality is a business solicitation from a private firm), some enterprising companies have sent out mass e-mail solicitations in the form of “notices” of “fees due” or other payments needed ostensibly to maintain the registrations or keep the IP rights in place.  They use firm names that have official-sounding names like “United States Trademark Registration Office.”  They are set up to appear like official notices that fees are due to the government to maintain trademark rights in some manner.  In reality they are soliciting fees to perform some registration service, not “notifying” a mark holder or user of anything but the opportunity to pay for optional private registration services that could be done by the registrant or holder itself or by its regular consultants.

The USPTO recently posted a formal warning about these solicitations on the USPTO website at http://www.uspto.gov/trademarks/solicitation_warnings.jsp, which includes a sample of an actual solicitation by a firm the USPTO  had taken action against.  The mailing was styled in an official-appearing government format and was prominently headed “IMPORTANT NOTIFICATION ABOUT YOUR FEDERAL TRADEMARK” with identification of registration and serial numbers to show it was directed to a specific registered mark. The left side had a space in large block letters that said “FEE: $375/ Reply by: NOW DUE.”  The textual content of the “notice” was accurate and at the end included an upper-case statement that it was a solicitation and that no money was due.  However,  the overall impact was misleading and designed to prompt involuntary payments from those mistakenly believing such payments were mandatory and payable to the government in order to preserve and maintain those federal trademark registrations. The firm in question told the USPTO it had ceased the solicitations.

Federal trademark holders need to beware of these clever efforts to solicit fees for services in the guise of “notice” of a government-mandated “fee.”  True communications from USPTO will come directly to the party who registered the trademark, which will be counsel if counsel was used to do this.  ALL OFFICIAL USPTO CORRESPONDENCE WILL BE FROM THE “UNITED STATES PATENT AND TRADEMARK OFFICE” IN ALEXANDRIA, VA, AND IF BY E-MAIL, FROM THE DOMAIN “@USPTO.GOV.”  If receiving e-mailed notices of any kind that appear to require payment of “fees” or other amounts to a governmental agency, federal trademark holders should contact counsel or the USPTO before paying money over.

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