Trademark Alert

Beware of Misleading Trademark Solicitations

September 25, 2012

Please be aware that a number of private companies are sending out solicitations to companies and individuals who have recently filed federal trademark applications or whose trademark registrations are due for renewal. These solicitations are often directed to “accounts payable,” and may resemble invoices or official correspondence from a government trademark office.

Do Not Fall Victim to Scam Solicitations

In some cases, the promised services are unlikely to be delivered. In other cases, the alleged services have no commercial value or duplicate what the trademark office already does for free. The trademark offices in the U.S., Europe, and elsewhere have posted warnings, yet the solicitations abound.

Who is a Target of These Solicitations?

Any company or individual who has filed a trademark application within the past year.

Steps to Avoid Risk

  • Put your accounting department on high alert.
    Frequent trademark filers should alert their accounting departments about the existence of fee-requesting solicitations and assist their colleagues in recognizing them. When in doubt, confer with counsel.
  • Review official warnings.
    Visit the sites of trademark offices in the U.S. and Europe that have posted warnings, sample solicitations and lists of deceptive companies.
  • Know how government agencies conduct business. Trademark owners should be aware that most official government trademark offices seldom, if ever, send an invoice to a trademark applicant that is represented by counsel, with WIPO being one notable exception.
  • Read the fine print.
    Some solicitations disclose relevant information, but it is usually in small type and is overshadowed by official-looking jargon and payment instructions.

The chair of Foley Hoag’s trademark practice, Julia Huston, recently published an article in World Trademark Review detailing these unscrupulous practices. The article provides several examples of misleading solicitations, and shares more practical tips for trademark owners.