In a recent blog post, we talked about how it is possible in the U.S. to file a trademark application on your own, and why it may not be such a good idea. Besides having a working knowledge of classes of goods and services, dates of first use and the need for searching, there is another good reason why you may want to not file yourself: The Dreaded Third-Party Service Offerings.
These third-party communications look, feel and smell like genuine invoices, asking the U.S. applicant to pay upwards of $2,000 per “recordation of trademark.” They come from official-sounding organizations such as “International Patent and Trademark Organization (IPTO)” or “World Patent & Trademark Services (WPTS).” Furthermore, they don’t look to be service offerings — the letters appear to be an invoice for work already completed. The letters may even look as if they come from the U.S. Patent and Trademark Office (USPTO) or a foreign trademark office. Regardless of source, they look official and are a genuine scam.
Recently, a mark we are responsible for went to registration. The address for service in the registration was to our attention. On a single day, we received four different letters (in separate envelopes) from four apparently different organizations. Each one resembled an invoice and was for a different amount of money (the least of which was $2,400 U.S.). If the applicant decided that they should pay all of these, their modest U.S. application fee could quickly turn into a $10,275 fee.
When reviewing these solicitations, you will see that the terms and conditions of the “agreement” appear on the back of the invoice in the very lightest of colors and the smallest of fonts in which they disclaim any association with a government agency. The USPTO has issued warnings on its website and in the communications to applicants upon the electronic filing of the applications. See:http://www.uspto.gov/trademarks-getting-started/non-uspto-solicitations and each new application receives the following paragraph as part of the USPTO standard response:
WARNING ABOUT UNSOLICITED COMMUNICATIONS: You may receive trademark-related communications from private companies not associated with the USPTO. These communications frequently display customer-specific information, including your USPTO serial number or registration number and owner name, and request fees for trademark-related services, such as monitoring, listings in international publications, and document filing. None of the companies offering these services are affiliated with the USPTO or any other federal agency. All official correspondence will be from the “United States Patent and Trademark Office” in Alexandria, VA, and if by e-mail, specifically from the domain “@uspto.gov.” Please consult the “Warning” page on the Trademarks section of the USPTO’s website for further information about unsolicited communications and to view representative examples of them. For general information on filing and maintenance requirements for trademark applications and registrations, including fees required by law, please consult www.uspto.gov, contact the TrademarkAssistanceCenter@uspto.gov or telephone 1-800-786-9199.
Forewarned is forearmed! If you didn’t ask for a filing to be done, be cautious about these types of communications.