March 26, 2012
It seems that every few months my clients get a raft of notices from very “official” sounding business, like “United States Trademark Protection Agency” seeking payment for services that appear to be necessary to maintain a trademark application or registration. As technology improves speed and efficiency, more of these opportunists are appearing.
U.S. Trademark Applications & Registrations are Public Records.
Filing an application for U.S. trademark registration makes certain information publicly available in the U.S. Trademark Office records. Several companies have been scraping these records and generating “official looking” notices and even invoices to unsuspecting companies. These notices appear strikingly similar to governmental agency communications and direct you to pay fees for registration, monitoring (keeping an eye out for applications similar to yours) and for filing with domestic or international lists, directories, etc.
MANY OF THESE ARE SCAMS.
Despite claims otherwise, the United States Trademark Protection Agency (USTPA) is NOT a governmental agency and the U.S. Trademark Office (USPTO) web site even showed a warning that the USTPA is NOT affiliated with the USPTO.
Some companies charge fees to be listed in their worldwide trademark registration directories. These are not official filings, their usefulness is limited and they have no legal effect.
Other companies hire non-legal administrators to do trademark filings without proper supervision or training. These companies can prove very costly due to filing problems. I hope you are not confused by such mailings. Often, if you are represented by counsel, the U.S. Patent & Trademark Office will not send mailings directly to you, they will be sent to your attorney of record. While some of these companies offer legitimate services, you should seek advice from legal counsel before utilizing them. Some examples of these companies include the following:
- Globus Edition S.L. in Spain
- Trademark Renewal Service in Washington, D.C.
- Company of Economic Publications Ltd. in Austria
- Edition The Marks KFT in Hungary
- United States Trademark Protection Agency located in Seattle, Washington
- Institute of Commerce for Industry, Trade, and Commerce located in Switzerland
- CPI (Company for Publications and Information Anstalt) in Liechtenstein (a phantom company which says it works with
- The Publication of Brand Names of the International Economy – another phantom company)
- IDM International Data Medium AnsbH in Liechtenstein
- S.A.R.L. – Societe pour Publications et Information located in Austria
- TMI Trademark Info Corporation located in Pearland, Texas
- ZDR – Datenregister GmbH in Germany
Many of these organizations send notices that look like invoices. I suggest that you not make payments without first consulting your attorney.
November 11, 2011
Notice of Proposed Rule, 76 Fed. Reg. 40,839, issued by the United States Patent and Trademark Office (USPTO) on July 12, 2011 addresses “proof” that a mark is in use. Specifically, the proposed rules address issues related to the USPTO’s ability to verify the accuracy of the identification of goods and services by allowing the USPTO to require additional proof of use of a mark.
The proposed rules allow the USPTO to require (1) additional “information, exhibits, and affidavits or declarations deemed reasonably necessary to examine” renewal applications and declarations of use, and (2) “more than one specimen in connection with a use-based trademark application, an allegation of use, an amendment to a registered mark, or an affidavit or declaration of continued use.” According to the USPTO, the proposed rules “will facilitate an assessment of the reliability of the trademark register . . . so that the USPTO and stakeholders may determine whether and to what extent a general problem may exist and consider measures to address it, if necessary.”
Although the USPTO indicates that the requirements will not be widely implemented, members of the trademark bar have expressed concerns that the circumstances under which the USPTO may require additional specimens and/or evidence are unclear and that such requests may affect filing deadlines.