Official-Looking Trademark Solicitations Meant to Confuse Applicants

Several owners of federally-registered trademarks have recently received “official-looking” trademark solicitations from the non-federally affiliated United States Trademark Registration Office (“USTRO”).  The USTRO, along with several other like-minded private, for-profit companies, are not associated with, or approved agents of, the United States Patent and Trademark Office (“USPTO”)—the federal agency officially responsible for issuing patents and trademark registrations in the United States.

Nevertheless, letters from these private, for-profit companies, like the USTRO, are often strategically designed to mimic the appearance of correspondence from an official U.S. governing body.  These letters include highly specific information regarding the registered trademark, including serial number, filing date, international classes, and citations to various sections of the Lanham (Trademark) Act.

Specifically, the USTRO letter demands an immediate payment “NOW DUE” of $375, which upon receipt will purportedly entitle the payor to (1) recordation of the U.S. Trademark Registration with the U.S. Customs & Border Protection, (2) monitoring of the trademark using the USTRO’s proprietary search engine and notifications of potential third-party trademark infringements, and (3) reminder notices of certain future filing requirements.  The letter also provides an inconspicuously-placed notice providing “THIS IS NOT A BILL. THIS IS A SOLICITATION.  YOU ARE UNDER NO OBLIGATION TO PAY THE AMOUNT STATED ABOVE UNLESS YOU ACCEPT THIS OFFER.”

The USPTO’s official website, http://www.uspto.gov, acknowledges awareness of these mailers and warns that these private companies are not affiliated with the USPTO.  The USPTO advises recipients to “read trademark-related communications carefully before making a decision about whether to respond.”  Likewise, all mail correspondence from the USPTO will either be sent from the office in Alexandria, VA, or, if by e-mail, from the domain @uspto.gov.

It is highly advisable that owners of federally-registered trademarks, instead, seek legal advice from an attorney knowledgeable in this particular field before responding to these types of mailers.

Authored by: Scott A. Meyer and John Sokatch.

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Chalker Flores, LLP provides intellectual property, business, corporate and litigation legal services to individuals, inventors, entrepreneurs, start-ups, spin-offs, universities, research institutes, and small to large public and private companies and businesses.  Founded by Dr. Edwin Flores and Daniel Chalker, additional partners include Scott Meyer, Chainey Singleton and Tom Jacks.  The lawyers of Chalker Flores, LLP provide big-firm expertise with boutique service and pricing.

If you would like more information about Chalker Flores, LLP, or to schedule an appointment please contact us at 214-445-4040.  Please follow us on Twitter at @chalkerflores.

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