In this ‘Intellectual Property Application Series,’ I’ll be discussing trademarks and the trademark solicitations you could receive after filing a federal trademark application. I’ll explain what a trademark is, what a trademark solicitation is, how to detect a fraudulent trademark solicitation, and what to do if you receive a suspicious notice.
A trademark is a type of intellectual property that uniquely distinguishes and identifies the source of a good. Trademarks assert an owner’s right to use a specific word, phrase, logo/symbol, design, or a combination thereof, in the market. Importantly, trademarks also convey an indication of the uniform quality expected of the goods/services it identifies. This is also known as the “good will” of the trademark. In general, trademarks are secured by a company to advertise and distinguish their products from those offered by other companies.
The word “trademark” is generally used as an umbrella term to include both trademarks and service marks. More specifically, trademarks protect those marks that indicate the source of a good, rather than the source of a service. The protections provided, under either a trademark or service mark, vary slightly. This is because they are specific to the classes of goods/services they protect.
The word “trademark” is also generally used as an umbrella term to include both commonly protected and formally protected trademarks/service marks. The protections provided by a trademark, and the obligations to maintain those protections, vary based on the type of trademark rights governing the mark.
Common Law Trademarks:
Common law trademark rights can be claimed as soon as a mark is officially used in commerce, to market a product/service. There is no formal application or review process to obtain common law trademark/service mark rights. Instead, the first individual to use a mark in commerce is awarded the common law rights to the mark. Appropriately, since common law rights are the easiest to claim, but provide the most limited of the trademark protections available and can be difficult to enforce. In contrast, federal and state trademark registrations provide a verifiable public record of the mark and its use in commerce.
State Registered Trademarks:
Formally protecting a trademark would involve filing an application to register the mark in individual U.S. states and/or filing an application to register the mark federally. To obtain registration in a specific state, first, the mark must be in current use in commerce. An official Application for Registration of a Trademark or Service Mark, must then be submitted to the relevant Secretary of State’s Office. The application must meet the filing requirements of the Secretary of State’s Office and strict filing procedures must be followed. These requirements and procedures vary based on the Secretary of State’s Office in question. The trademark itself must meet the statutory requirements for registrations, governed by the Secretary of State’s Office with which registration is sought.
Federally Registered Trademarks:
To obtain federal registration, an official Application for Federal Registration of a Trademark is filed with the United States Patent and Trademark Office (USPTO). An application for federal registration undergoes the most rigorous of trademark prosecution procedures. The federal trademark prosecution process involves a review of the federal trademark application, to confirm adherence to the government filing requirements. Also during the prosecution process, the mark itself is examined to confirm it qualifies for federal protection, in accordance with strict government rules. Once the examination process is completed and the application is accepted, a formal Federal Certificate of Registration is issued and the mark is considered protected under federal trademark laws.
Only marks in current use in interstate commerce can be granted federal registration and protection. If a mark is not currently being used to market products/services, but there is a true intention to do so, the USPTO does provide the option of filing an intent-to-use based application. This option allows for an earlier application filing date and potential priority over competing marks, which could be crucial in a legal conflict over the trademark.
A trademark solicitation is a notice, sent by a third-party, offering their services in exchange for a fee. Third parties use public information, available on the USPTO from the trademark application or registration, to send solicitations via mail, email, or text. While some solicitations are sent by legitimate sources, others are merely fraudulent. The most malicious notices are sent with the intent to deceive and defraud unsuspecting trademark applicants and registrants.
Legitimate trademark solicitations exist and are merely offers for service, e.g. legal services, assistance with filings, or other services. Some law firms send notices to a trademark applicant offering their services for responding to a pending trademark Office Action. While hiring an attorney is not necessary for responding to a trademark Office Action, like all things involving intellectual property, an attorney can be a great help in getting the results you expect.
Other trademark solicitations are sent with the intention of misleading. One example of a misleading notice is an offer for assistance to renew a trademark registration. Trademark registrations can be renewed directly through the USPTO and a third service is not required. These third-party companies do not indicate this fact in their solicitations, however.
The most dangerous trademark solicitations are sent to defraud unsuspecting trademark applicants and registrants. An example of a fraudulent trademark solicitation is a notice warning that an additional government fee is due, when one is not due. Another common tactic is for a fraudulent trademark solicitation to offer to record trademark registrations in a private registry. A private registry does not exist in the U.S. As reported by the USPTO: In March 2017, the operators of a private company—the Trademark Compliance Center—were convicted of money laundering in a trademark renewal scam.
How to Detect Fraudulent Trademark Solicitations:
As many of these trademark solicitations are sent to mislead, they will often appear to be sent from legitimate sources. The solicitations often include accurate information about your mark and renewal deadlines, retrieved from the public information available on the USPTO. Further, third-parties go out of their way to use names that sound like a government agency or the USPTO itself. Further examples of these misleading communications can be found here.
If a trademark is filed with the assistance of an attorney, all important communications regarding the trademark application or registration will be sent directly to your attorney. If a notice is received and it wasn’t from your attorney, it would be advisable to send the notice to your attorney before responding. If you are unrepresented, all official correspondence about a trademark application or registration will be sent from the “United States Patent and Trademark Office” in Alexandria, Virginia, and all emails will be from the domain “@uspto.gov.” With this information, it is possible to protect yourself.
What to do if a Suspicious Notice is Received:
If a suspicious notice is received, the USPTO recommends that you file a consumer complaint with the Federal Trade Commission (FTC) immediately. The FTC has legal authority to prosecute offenders. It is also encouraged to contact your state consumer protection authorities. This can put state agencies on the path to issue investigative subpoenas and file complaints against companies engaged in misleading practices.
The USPTO does not have legal authority to stop private companies from sending trademark-related offers and notices. The USPTO also does not have legal authority to sue or prosecute entities that defraud or attempt to defraud applicants and registrants. Instead, the USPTO works to combat the problem by raising awareness and working closely with the Department of Justice, the Federal Trade Commission, and the United States Postal Inspection Service.
Trademarks are important to a company. They are used to protect a company’s mark and help consumers tell one company’s products/services from another. After filing a federal trademark application, you may receive potentially fraudulent solicitations for trademark services. The knowledge that these solicitations exist and how to detect a fraudulent trademark solicitation could save you from being defrauded. If a suspicious solicitation is received, it is important not to respond, but instead to file a consumer complaint and contact your state authorities. Alternatively, if you are represented by an attorney, they can advise you as to the authenticity of any solicitations and take care of the process for reporting any fraudulent solicitations.
Thrive IP® is Here to Help You Thrive:
Don’t leave a matter as important as your intellectual property to chance. Willing help in the form of an experienced legal team is here and is just a call away. Thrive IP® patent attorneys are located in Charleston, SC; Greenville, SC; Knoxville, TN; Alexandria, VA and Smithfield, VA. Please contact us if you have an interest in filing a trademark application or if we can help answer any of your intellectual property questions.