Lately we have noticed a proliferation of new scams targeting trademark owners. There are two types: online sites that are offering to register your trademarks for a very low fee, and direct solicitations to trademark owners alleging an imminent threat to their mark by a third party.
Private “trademark registration” websites
The United States Patent and Trademark Office (USPTO) allows laypeople to file their own trademark applications online, and has many tutorials to help applicants navigate the process. Nevertheless, the USPTO advises that the process and trademark law is complicated, and it would be wise to seek the help of a trademark attorney. https://www.uspto.gov/trademarks/basics/why-hire-private-trademark-attorney
An online search for “trademark registration services” will result in listings for many private websites which promise to take care of your trademark registration needs for very small sums, e.g., “for as little as $49!” These services typically offer tiered fee packages that sound like they will include the same types of work that legitimate trademark attorneys will normally perform for you to clear and register your business trade name or marks. For example, they state that they will search the trademark database registry for your chosen mark, prepare and file your application, and even have a trademark attorney review the application before it is filed.
In reality, these private “trademark registration” services will give you a form to fill out, which asks for the same information required on the USPTO trademark application. Whatever information you enter into that form is then dropped into the USPTO’s online application and submitted to the USPTO, apparently with no human oversight. No screening searches are performed, or if they are, the search is for the identical mark only, and thus will not find similar marks that will be considered trademark infringement under trademark law. Any mistakes that you fill into the private site’s form are replicated in the USPTO application. This can often result in an application that is so erroneous it is rejected outright, or one that will be rejected in due course because of the errors and/or missed conflicting marks.
For one example, this firm represent Sanrio and its famous mark HELLO KITTY. Sanrio owns dozens of US trademark registrations for the name HELLO KITTY, the Hello Kitty face design, and Hello Kitty’s signature bow design, including for goods that fall in class 16. Recently, our watch service alerted us that a new application had been filed for a mark called HELLO KITTY PINK FACE WITH PINK HEARTS in class 16. The following was entered as the “drawing” of the mark (the drawing shows the USPTO what your claimed mark looks like):
The same text, “Hello Kitty Pink Face with Pink Hearts” was entered in several fields, including the field for describing the class 16 goods to be covered by the application.
The correspondent for the application was an email address for one of these private “trademark services” websites. The service apparently
— failed to do an adequate search to discover Sanrio’s prior registrations, and thus did not alert its customer that Sanrio’s prior registrations would block this application;
— failed to notice that the drawing it submitted for the application was reversed;
— failed to notice that the mark name and description did not adequately describe the drawing (the mark must include all type and imagery – note that “flowers” are not in the description, and the Hello Kitty face is not “pink”); and
— failed to notice that the field for goods was incorrectly filled out.
As a result of that last error, the USPTO rejected the application for failure to meet the minimum filing requirements. The “trademark registration” service’s customer lost both the fee she paid to the private service (typically, $49-399) and the government filing fee (at least $225) for this inadequate filing. Note that even if she had received sufficient oversight to ensure that she filled out the goods field correctly, the application was doomed from the beginning, because she cannot register any version of Sanrio’s Hello Kitty marks.
Legitimate trademark attorneys do not make these kinds of mistakes. Our fees are higher because it takes thorough and competent research and human review to prepare and file a successful trademark application. Automated algorithms cannot do the job.
Direct solicitations warning of imminent threat to your trademark rights
These types of scams usually begin with an email message (or letter) claiming that the sender represents a client who is attempting to register a mark that belongs to you, for example, that they came across your mark when doing brand name searching for their client. Others may say that they are merely aware of another business that is using or attempting to register your mark. Both types of messages offer to help you get your own registration in order to prevent the other party from stealing your mark (if you follow-up, there will be exorbitant fees to do so). You may recall that similar scams involving domain names were popular in the last decade, when so-called domain name registries sent emails to U.S. trademark owners alleging that another entity was about to register your mark as a domain name overseas. Typically these messages do not identify the other company that supposedly is threatening your trademark rights. In several cases where a client has brought one of these message to our attention, a quick search confirmed that no such competitive business existed.
There are several characteristics that can tip you off that these are fraudulent solicitations. The scammers consistently impose a very short timeline for you to respond (for example, “if we do not hear from you today, we will file the trademark application for the other party tomorrow”). Their M.O. is to create a sense of urgency so you won’t have time to seek professional advice. Frequently, the writing will be in poor English, with simple grammatical and factual mistakes. This is a tip off that the scammer is not a legitimate U.S. attorney. But some scammers are quite sophisticated. In one extreme example, a scammer we encountered used the same last name as a real Canadian attorney, and misrepresented that he was a member of the same law firm. He used an email domain that omitted one letter from the real law firm’s site. He had even set up a copycat website at that look-alike domain which mimicked exactly the genuine law site except that it substituted his made-up name and bio for that of the legitimate partner with the same last name (we alerted the legitimate law firm).
Finally, and most importantly, messages from senders who say they represent someone trying to register your mark violate a core principle of legal ethics. Attorneys have an ethical obligation to represent the interests of their clients and to keep their client’s information confidential. This ethical obligation prohibits legitimate attorneys from jeopardizing their own clients’ interests by alerting a potential competitor about their client’s intentions to register a trademark.
Your best practice if you receive such a direct solicitation, if you have any doubt, is to contact us and let us investigate. If indeed we find that another business might be using your mark in an infringing way, we can work with you to determine the best strategy. This might include filing your own trademark application, or sending a cease & desist letter, if appropriate. Or we might suggest setting up a watch service on your marks. But we might also tell you that you have nothing to worry about.
Trademark “registration” and “renewal” scam letters are still happening
Older scams we have warned about previously are continuing unabated. These scams look like official letters falsely saying your trademark registration is about to expire unless you send them renewal fees now (often giving “renewal” deadlines that are a year too early), or soliciting “registration” fees for bogus registries. See our previous posts about them here https://www.owe.com/avoiding-trademark-scams-and-solicitations-2/; https://www.owe.com/avoiding-trademark-scams-and-solicitations/; and the USPTO scam alerts here https://www.uspto.gov/trademarks/protect.
– Contributed by Linda Joy Kattwinkel