Trademark Owners Beware: Fraudulent Companies Try to Collect Fees

If you file a trademark application with the US Patent and Trademark Office (“PTO”), you have put the public on notice of your claim that you you are using (or intend to use) a trademark with your goods and services. While filing an application is certainly recommended, it exposes you to companies who prey on unsuspecting trademark owners. There are many examples of these unscrupulous companies, and there are different triggers that alert them to send you an invoice for their “services.” This article explains some of these examples to help you prevent paying fees to a company whose services you do not need and did not ask for.

The first trigger is the filing of a trademark application. Trademark applications are public record, available to anyone with access to the internet. As the Applicant, your name, address, and any other contact information you included in the application are available in your trademark record, which is promptly put online. Filing your application can trigger a host of offers from fraudulent companies offering to watch your mark, to file international trademarks, to list your mark in a directory, or to pay “registration” fees. These notices often appear as if they come from the government.

The second trigger is the publication of your trademark in the PTO’s Official Gazette. Your trademark is published when an Examining Attorney at the PTO has concluded that your trademark is registerable. The purpose of publication is to allow the public an opportunity to oppose registration of your mark. What it means to these fraudulent companies is that you are about to have a registered trademark, and this is their chance to solicit you with offers for trademark watch services, international registration, and other services.

The third trigger is the renewal of your trademark. A renewal affidavit must be filed between the fifth and sixth years after registration, then again between the ninth and tenth years after registration, and every ten years thereafter. Fraudulent companies can troll the PTO’s records for trademarks that were registered five years ago or nine years ago, and send you offers to file the renewal for you, or even make it seem like they are the PTO and are reminding you of the renewal deadline.

If you receive something in the mail and you are not sure if it is legitimate, your attorney can take one quick glance and determine whether it comes from a reputable source. If you have any questions about trademarks, please contact one of our trademark associates, Kim Grimsley (Grimsley@bowie-jensen.com) or Mitchell Rothenberg (Rothenberg@bowie-jensen.com) or our trademark paralegal Tina Murphy (Murphy@bowie-jensen.com).

WHAT YOU SHOULD KNOW:

· Once you have filed your application and paid the filing fee, there are no other fees for use-based applications, and there is only one further fee for intent-to-use applications, which is paid when you file a Statement of Use ($100 per class). Beyond that, only renewal fees need to be paid. There is no such thing as a “registration fee” or “maintenance fee” for trademarks.

· The PTO will never send you reminders, invoices, or offers for additional services. All fees are paid up front with filing, and it is not the PTO’s job to remind a trademark owner that their mark is due for renewal (there are over three million trademark registrations, after all!).

· Companies that solicit you for trademark “watch services” are typically fraudulent. Watch services can be a valuable way to protect your trademark, as watch services keep their eyes on the PTO’s records to see if people are trying to register similar marks, but a reputable company will not contact you—you must contact them. We recommend Thomson Compumark for trademark watch services.

· Renewing your trademark is relatively easy, and can be done online. Renewal fees are $100 per class for the 6-year Sect. 8 renewal, $200 per class for the optional Sect. 15 Affidavit of Incontestability, and $400 per class for the 10-year combined Sect. 8 and 9 renewal.

· Filing an international trademark application is a complicated and expensive procedure. If you want to pursue an international registration, you should contact an attorney, not a company who claims to be experts at international filings.

· Some companies will use names like “The United States Trademark Protection Agency” to make it seem like they are affiliated with the United States Patent and Trademark Office. If you receive a letter from any entity using a similar name as the PTO, look carefully at it—it should state that they are not affiliated with the PTO somewhere on the letter.