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August 9, 2012

Trademark Owners: Beware of Official-Looking Invoices About Your Marks

If you or your company has registered or applied to register a trademark with the United States Patent and Trademark Office (USPTO), it is likely you have or will receive solicitations from official-looking companies for trademark-related services that look like they are coming from a government agency. The notices suggest that fees are required - they are not. These solicitations include specific, accurate information about you and your mark, which information is available from public databases.

Typically, no such notices come from the USPTO. If we or another law firm submitted your trademark application, you will receive no correspondence directly from the USPTO; all correspondence from the USPTO will be sent to your trademark attorneys. Notably, once your certificate of registration has been issued, the USPTO sends no notices or reminders telling you when your mark is due to expire or will be cancelled if maintenance requirements are not met.

The USPTO has issued a warning to the public about "unscrupulous" companies that use "U.S." or "United States" in their names, and that mimic official government documents, representing that required "fees" are to be paid.

The World Intellectual Property Organization (WIPO), which processes certain international trademark and patent applications, also warns of these types of "fraudulent" invoices, and includes examples with an extensive list of companies that send such solicitations. A link to the WIPO warning can be found here:  WIPO describes the invoices as "created by unscrupulous companies and individuals who are trying to defraud you into paying fees to them." They note with respect to one of their examples, "The authors of this fakery even had the gall to include a bogus warning about other requests for payment, to give themselves an air of legitimacy!"

Some of the services claimed to be offered by these companies may include: trademark monitoring; registration with U.S. Customs and Border Protection; renewal; or publication in the company's private database or registry.

What to do? If you receive any correspondence regarding your trademark that requests any fees be paid:

  1. Read the name and address carefully. Official correspondence from the USPTO will be from the "United States Patent and Trademark Office" in Alexandria, VA, and if by e-mail, specifically from the domain "@uspto.gov." 
  2. Contact us or another attorney if you have any questions. 
  3. Consider registering a complaint with the appropriate government agency. The USPTO was able to stop the "United States Trademark Registration Office" from sending similar solicitations, as a result of complaints it received. 
  4. Alert others in your business, especially those who receive or pay invoices, about these schemes.

If you require further information regarding the information presented in this Legal Alert and its impact on your organization, please contact any of the members of the Branding, Trademark & Copyrights Practice Area.

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