- Published: 30 October 2019 30 October 2019
By Beverly A. Marsh, Partner, Standley Law Group LLP
Information associated with U.S. federal trademark registrations and applications is a matter of public record. Anyone with internet access can view the files on the United States Patent and Trademark Office (“USPTO”) website and obtain contact information associated with the owner of an application or registration. In the past few years the number of unsolicited communications and scams targeting trademark owners using information contained in USPTO public files has noticeably increased.
Typically, trademark owners receive unsolicited correspondence in the mail or via email at the addresses listed in the public files related to their trademark registration or application. One of the most common types of unsolicited communication is a letter to the trademark owner seeking payment in order to put the mark on a private “registry” or “register.” Rest assured that if you have received a U.S. trademark registration your mark is already on one of two public registers of trademarks maintained by the USPTO: The Principal and Supplemental Registers. These are the only two registers maintained by the USPTO, and there is no need to put your U.S. mark on a private register maintained by someone other than the U.S. federal government.
Another common unsolicited communication is a letter informing the owner of a registration that a renewal is coming due. Typically, these notices are sent far in advance of the window for paying the renewal, in an attempt to arrive before a law firm associated with the maintenance of the registration may send out their standard reminders. These letters often suggest to the trademark owners that they are routine reminders from the USPTO about an upcoming renewal deadline, but they are in fact independent companies seeking to make a profit off of the renewal process. Often times, the window for renewal and deadline for renewal is mischaracterized to suggest that the deadline is fast approaching and must be taken care of immediately.
Other unsolicited communications will wrongly claim that fees are due for certain tasks related to registration of a trademark, when in fact they are not.
A careful trademark owner must watch out for potential scams by carefully reviewing correspondence to identify the source. Official emails from the USPTO come from the domain “@uspto.gov” and official letters come from the “United States Patent and Trademark Office” in Alexandria, Virginia. We have seen a variety of unauthorized correspondence that lists addresses in Europe. Pay close attention to companies with names that try to sound official. For example, names that contain the terms “United States,” “Trademark,” “Patent,” or “Agency.”
It is important to note that if a law firm or attorney has been designated as the correspondent on your pending trademark application or issued registration, official USPTO correspondence will be sent to that law firm or attorney.
If you receive a communication about your trademark application or registration and are unsure if it is from an official source, check with your trademark attorney before responding to the communication.
Standley Law Group has extensive experience in representing both domestic and foreign trademark applicants and we would be happy to discuss your trademark issues with you.