Beware! Trademark Solicitations Designed to Confuse (Southwest Florida Business Today)

Jeanne L. Seewald, John J. Cunniff

Unsuspecting trademark owners are paying unnecessary trademark “renewal fees” that are not what they seem to be when first viewed. We are seeing continued efforts by companies attempting to confuse unsuspecting trademark owners into paying thousands of dollars in false renewal fees. These individuals prey on business owners by sending “invoices” requesting payment of unnecessary fees to maintain trademark registrations, perhaps counting on the invoice not being read closely. These invoices appear to be from a governmental agency and often are sent years in advance with an erroneously early renewal date so that the trademark owner pays the invoice before the owner is contacted by its trademark attorney about a valid renewal. Know that the United States Patent and Trademark Office (USPTO) may send owners reminders for renewal fee deadlines, but they will not send actual invoices. If you receive such an invoice, you should NOT pay it. If you have questions about an invoice, it should be sent to your legal counsel for review. You are also welcome to check with any of our trademark attorneys. PLEASE DO NOT BE A VICTIM OF THESE SOLICITATIONS! For more in-depth information about the types of solicitations we are seeing, continue reading below.

These pseudo-invoices use letterhead with names that suggest the source is some type of governmental or international organization or are confusingly similar to the USPTO. For example, our clients have seen solicitations from organizations calling themselves names such as “World Organization for Trademarks,” “Global Patents and Trademarks” and even “Patent and Trademark Office” (but not United States Patent and Trademark Office – see “Cancellation” notice below).  These companies often claim that they are merely soliciting you to hire them to renew your trademark; however, the invoices create confusion as to the issuer and it is our experience that if you “hire” these companies, the work may never be completed. Another variation of the solicitation is an invoice asking you to pay publication fees. Again, these companies cause trademark owners to initially believe they must pay these fees to keep their trademark active. The details of the “offer” can be found in the fine print, often buried in the middle of other text or in a light grey type. One example states, in less-than-perfect English and in light grey type: “Dear Customer, Please notice, that this form is not an invoice. This is an offer for the annual registration of your Trademark in our internet database … The registration on our database has not any connection with an official government organization. There is no obligation for you to pay this amount and we have not any business relationship yet…”

The United States Patent and Trademark Office has identified suspicious trademark-related solicitations originating from 57 different sources within the U.S. and 25 originating outside of it.  Undoubtably, more have not been reported. Any invoices received independently of your intellectual property attorney should be automatically viewed skeptically, and any suspicious invoices or renewal notices should be sent to legal counsel for review.

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