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.
Concentrating in Business and Commercial Litigation in the State
and Federal Courts with an emphasis on Intellectual Property
Rights, Contracts, Corporate and Business Dissolutions, Unfair
Competition, Fraud, Business Torts, and Appeals.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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On May 19, 2016, Robert Bahr, Deputy Commissioner for Patent Examination Policy of the U.S. PTO sent a memorandum to the Patent Examining Corps that discusses the recent decisions issued by the U.S. Court of Appeals for the Federal Circuit.
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