I frequently get calls from concerned clients who have registered trademarks at the U.S. Patent and Trademark Office. They have received some sort of official looking “invoice” from a company that sounds governmental and important and the “invoice” implies that the client’s trademark will expire or be dismissed or some such horrible thing unless $650 bucks is promptly remitted. Be advised that this is a scam and don’t fall for it.
How the Scam Works
The scammers send unsolicited mailings to registered trademark owners and applicants, offering trademark monitoring services, trademark renewal services, and other general trademark maintenance at exorbitant prices. These companies have nothing to do with the United States Patent and Trademark Office (“USPTO”) but search the USPTO public records and send offers directly to trademark owners. Their materials are designed to appear as though they were prepared by an official government agency, often disguised as government invoices or other official notices regarding trademark rights. Many trademark owners have mailed in large sums thinking that these invoices are required for trademark registration or protection.
For example, the United States Trademark Protection Agency has chosen a name confusingly similar to the USPTO and offers “trademark monitoring services” through unsolicited mailings. This service monitors only the Trademarks Official Gazette and the USPTO online database of trademark applicants, both of which are available to the public, without charge, on the USPTO website. The USPTO is aware of this scam and has posted a warning on its website that “An entity doing business as the ‘United States Trademark Agency’ is NOT affiliated with the United States Patent and Trademark Office.”
Similarly, Trademark Info Corporation mails trademark owners “invoices” requesting payment of $596.00 in exchange for “publication” of the mark on a website that provides nothing more than a list of other trademark owners that were scammed for the fee. Other known companies that regularly send out unsolicited mailings include United States Trademark Center, American Trademark Agency, Trademark Renewal Services, and Trademark Safeguard – Trademark Monitoring Service.
These companies prey on trademark owners’ desire to vigorously protect their marks. While trademark owners obviously should monitor and protect their intellectual property, the services offered in these unsolicited mailings are confusing, expensive and unnecessary.
MAINTAINING AND PROTECTING YOUR TRADEMARKS (The Stuff You Do Have To Do To Keep Your Trademarks Alive)
An owner of a federally registered trademark is required to file an affidavit confirming their continued use of their mark during the sixth year following the date of registration (a “Section 8 Affidavit”). In addition, the trademark owner must file a Section 8 Affidavit and a renewal application (a “section 9 Affidavit”) during the tenth year following the date of registration. If you don’t meet these and other deadlines, your registration will get cancelled. You do have fees associated with this filings, but they should only be paid to the USPTO (and your lawyer may also have legal fees associated with accomplishing these maintenance filings for you).
In addition, you should monitor third party use of similar marks so that you can oppose applications for confusingly similar trademarks and spot potential infringers. Because failure to adequately pursue infringers can lead to loss of certain rights and remedies, you should contact qualified trademark counsel any time you see someone else using your marks in an infringing way. Many trademark owners use third party trademark monitoring services available from NameProtect, CT Corsearch, Thompson and other reputable companies. These companies provide thorough monitoring services at reasonable prices and do not send unsolicited mailings to trademark owners.
Official trademark notices will only be sent by the USPTO or your attorney. If you do receive a notice regarding your trademark rights, alert your attorney before you make payments to any third party. Please alert employees in your financial, accounting, or other relevant departments to make sure they aren’t taken in by the scammers either. Everyone in your organization should feel free to file these “invoices” in the “round file.”