Recent Trademark Scam Targets Unsuspecting Businesses
From time to time our clients get a document in the mail like the “Reminder” shown here, in regards to their trademark. The document looks official and at first glance, appears to be from a government agency. Many businesses that receive these notices believe the fee is mandatory, sign the form, and when the bill arrives, they pay it. Unfortunately, this is a scam, artfully designed to be deceptive.
The first thing you should know about the U.S. government and your trademark is that the government will never send you a reminder or notice that your trademark is about to expire. It is your job, or your attorney’s job, to keep track of the date when action needs to be taken in regard to the maintenance of your trademark rights.
Additionally, all official correspondence from the U.S. Government will be from the “United States Patent and Trademark Office” in Alexandria, VA, and if by e-mail, specifically from the domain “@uspto.gov.” Any correspondence from another entity, no matter how official looking, is not government correspondence. Further, the United States Patent and Trademark Office issued a general warning about non-USPTO solicitations that may look like documents from the USPTO.
This scam document was recently sent out by the “Patent & Trademark Agency LLC” (referred to as “PTA”). It has been marked up to show some of the factual and legal problems it contains.
One way to identify this “Reminder” as a scam is an obvious factual error, referencing the expiration of trademark registration every five years. This simply is not true. Trademark registrations in the United States are valid for 10 years, although in the initial term certain paperwork must be filed between the fifth and sixth year in order to maintain the registration. In no event is any action required by the end of the fifth year following the date of registration.
However the legal problems with such a document do not end there. The order form has a full page of fine print on the reverse side, and that fine print is a viper’s nest of problems for the unwary. For example, it grants the PTA the power to negotiate on the company’s behalf concerning the trademark, while providing the company is responsible for all expenses (and yet the company has no way to control those expenses). It contains a provision that indicates the failure to provide certain information requested by the PTA within 10 days may result in the cancellation of the agreement without any liability on the part of the PTA. The order form also requires the company indemnify the PTA as well as its “trademark consultants” in a variety of circumstances. Further, it renews yearly, so it is unclear as to what exactly any company agreeing to this is getting itself into. To add insult to injury, the terms of the order form specifically indicate the PTA is not liable for the “loss, lapse, or cancellation of the registration of a trademark” – despite the fact that this is very thing you have supposedly hired them to prevent.
In addition to the information available at the USPTO, the International Law Trademark Association has a fact sheet about Unsolicited Offers for Trademark-Related Services in the United States. It can be found here. While it lists a number of providers of such services, you should be aware they regularly change their names.