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Scams: The Downside of Federal Trademark Registration

Registering your trademarks at the federal level with the U.S. Patent and Trademark Office (USPTO) is an important, and often necessary, step for the long-term protection of your trademarks. Unfortunately, applying for and receiving a trademark registration also subjects you to unwanted solicitation from third parties.

Any application to register a trademark at the USPTO will put your company name and mailing address on a publically accessible database that you can view on the USPTO website. Shortly after you file a registration application you can expect unwanted and unsolicited mail and e-mail offering to sell you services for things such as "trademark publication", "domain name registration", and other official-sounding services. Many of these companies have seemingly professional names that could sound like the "real thing" with variations of "United States" and "Trademark" in their titles. Often the mail will come with letterheads that look more authentic that some of the communications from the USPTO!

Some of these communications may include "invoices" which make it appear as though you owe them money for the services they provide. However, if you read the small print, you will see that these mailings are solicitations from private entities not affiliated with any government agency. They are essentially scams to get you to pay them annual fees in return for nothing that isn't already available on the public databases. Paying these "invoices" will enter you into a contract for services that you do not need that are duplicative of what the USPTO provides. In addition, if you have an attorney who filed your registration for you and who's monitoring your mark for you, entering such a contract could lead to the attorney being taken off the USPTO records. Your attorney would no longer receive any correspondence from the USPTO.

In fact, if your trademark registration application was handled by an attorney, the USPTO will never contact you first but will direct all official communications to the attorney of record. If you have any questions about the authenticity of any communications you receive about the status of your trademark registration, you should contact your trademark attorney before making a potentially costly and unnecessary decision.

Another side effect of registration of a trademark in the US is a noticeable increase in e-mails from companies claiming to be domain name registers, usually located in Hong Kong or China. The most common variation of these emails is addressed generally to the CEO or principal of your company and gives dire warnings that they were approached by a fictional third party company to register a domain name that incorporates your company's trademark. The e-mail usually continues to state that as part of their due diligence they came across your company as being the true owner of the trademark and are offering you the opportunity to block the domain name registration by the fictional third party company with the payment of a registration fee. This is a trick to get you to purchase domain names that you wouldn't otherwise want or need.

Internet domain name registrars are under no obligation to contact trademark owners if they suspect trademark infringement. They typically leave enforcement of trademarks to the owners of those marks. If you do need to register an internet domain name in a foreign country, contact your attorney or a reputable domain name service. If you need to register a trademark in a foreign country, your U.S. trademark attorney most likely has contacts and relationships with counsel in most international jurisdictions who can handle the registration for you.

For additional information, please contact Jonathan D'Silva at jdsilva@mijb.com.