Applicants and registrants of trademarks are inundated with offers to perform potentially unnecessary services. These solicitations often come in the form of invoices, with prominent and false "due dates." Other times, they resemble official USPTO communications, on letterhead and with an envelope designed to appear as though it came from a government agency, and with a request for instructions and payment. The solicitations purport to offer a variety of services, including publication services, watch services, registration services, domain name‒registration services, renewal services, and more.
While trademark practitioners have long cautioned clients to disregard these notifications, last week one law firm, Leason Ellis LLP, took a more dramatic action—it filed suit against Patent & Trademark Association Inc., or PTMA, in federal court in the Southern District of New York.
The complaint accuses PTMA of deliberately deceiving consumers through its "solicitation notices," which request payment for the publication of a company's trademark application details on a database that provides no real value, and that merely repeats the information publicly available through the USPTO's own publication and public-records systems. Among the ways in which PTMA is alleged to deceive customers is its use of the name "Patent & Trademark Association"—which the complaint accuses PTMA of having selected to give the false impression that it is an official organization or affiliate of the USPTO, rather than a for-profit business. Citing PTMA's alleged attempts to dupe consumers into purchasing its services, the complaint accuses PTMA of unfair competition and false advertising under the Lanham Act, as well as various violations of the New York General Business Law and common law.
While trademark owners and practitioners will no doubt watch this case with keen interest, it also serves as a reminder to our clients to be skeptical about third-party correspondence they receive related to their trademarks. All fees should be paid directly to the relevant trademark office by the trademark counsel who represents the applicant or registrant in connection with the filing, or by the applicant or registrant itself. Fees should never be paid to third parties, no matter how authentic the invoice looks. If you are a client of Morrison & Foerster, be sure that you do not pay invoices related to your trademarks that are issued by anyone other than Morrison & Foerster.
As for any trademark solicitations that you may receive, most are offering publication services, watch services, registration services, domain name‒registration services, or other services that are almost certainly of low, if any, value. All such solicitations should be disregarded.
But to complicate matters, not all legitimate correspondence will be sent to trademark owners through their trademark attorney of record. Some legitimate communications may come from other sources and be sent directly to trademark owners. For example, if a petition to cancel is filed against a U.S. registration, the USPTO will mail the petition and scheduling order directly to the registrant, not to the attorney of record. Moreover, the World Intellectual Property Organization sends communications directly to holders of international registrations, and the Korean and Japanese trademark offices often send certificates of registration directly to registrants, regardless of whether they are represented by counsel. It is important not to ignore these types of communications because they may trigger important deadlines.
Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.
© Morrison & Foerster LLP. All rights reserved
