Erika S. Koster

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Trademark professionals often warn our clients to be skeptical when they receive official seeming bills or notices offering pricey and unneeded trademark related services. These scams have been around for as long as I have been practicing trademark law. There are periodic attempts to combat the practice by our community with warnings (we blogged about the issue here), information (the USPTO maintains a blacklist and encourages trademark owners to email a copy of the notice and the envelope it came in to TMFeedback@uspto.gov in order to keep the list up-to-date) and lawsuits.

Whack-a-Mole Game at a CarnivalThis summer has seen another flurry of activity against the moles.

A few weeks ago the United States Patent and Trademark Office held a roundtable on fraudulent solicitations:

Numerous owners of U.S. trademark registrations, as well as applicants for such registrations, have been targeted by unscrupulous parties who extract their names from … USPTO databases and offer them services, often holding themselves out to be acting on behalf of the USPTO. In many instances, the services are never performed, or are performed in an incorrect manner that puts the registration at risk of cancellation. In addition, inflated fees may be charged for the alleged services.

Leason Ellis, a 25-attorney IP boutique firm based outside New York City, filed a lawsuit in 2012 against a scammer called USA Trademark Enterprises, which was eventually resolved by a consent decree. The firm sued again in 2013, this time against a renewal scam called Patent and Trademark Agency LLC. Last month the firm reportedly filed a new lawsuit against the similarly-named Patent and Trademark Association Inc.

If you are victimized by one of these con artists, we encourage you to take action both for yourself and for the good of the community. If you have incurred actual damages, talk to a lawyer about how to obtain reimbursement and whether you might be a good candidate for a class action lawsuit on behalf of other victims. Although your losses may not be enough to justify incurring legal fees, a successful class action lawsuit reimburses class representatives for their reasonable costs and covers the attorney fees as well. Think about it…

The short answer is that ™ is supposed to mean someone just thinks something is a trademark. ® is supposed to mean that a government trademarking authority has agreed that it could be a trademark and has issued a registration certificate.

Registered trademark in a red background
Copyright: silvia / 123RF Stock Photo

Getting your trademark registered by a government trademarking authority always takes time and money. It is fitting that at the end of the process, if you are successful, you will receive a certificate that looks almost like a graduation certificate. In the United States, the paper certificate bears a gold embossed seal. And you deserve it! You spent time, money and often had to prove to skeptical bureaucrats the worth of your brand.

If you jump through these hoops, it can be irritating to see others wrongly proclaim that their trademark is registered with the registration symbol ® when they have not. But you can only take action against this misuse if you can prove the  symbol misuser did so deliberately–that it intended to deceive or mislead the public or the USPTO. This can be tricky to show.

For example, last month the Trademark Trial and Appeal Board dismissed an opposition in which the owners of two similar trademarks (FACETS versus PHACET) fought over which one used and had the right to register its trademark for software. The company applying for  the FACETS registration had successfully registered FACETS for several types of services but had not yet been granted a registration for the trademark in connection with software (the trademark had been registered a number of years ago for software but that registration had expired). Despite that, it used the registration symbol with the trademark In SEC filings to describe not only its services (correctly, since they had registered) but also its software (allegedly fraudulently because FACETS was not currently registered for software).

SEC filings are sworn statements but that’s not enough to make them evidence of symbolic fraud in the TTAB’s eyes, at least in this case.

In the United States, unlike overseas, you get a lot of legal protection right away simply by coming up with a brand name and USING it to sell goods and services. USE is the crucial issue here.

This means that we trademark attorneys spend a lot of time thinking about how to prove that our clients’ trademarks have been used. It’s not as easy as it sounds!

For example, last month the USPTO’s reviewing board rejected a real estate company’s attempt to prove it was using its name. The company submitted digital photos of the front door of its facility where it provided and managed its real estate services:

door
Source: In re Republic National LLC (TTAB Opinion), February 23, 2017

Not good enough. As experienced trademark attorneys know, the USPTO is persnickety about what proof it will accept to show a trademark is actually in use. In this case, it wanted to see a description of the services being offered, not just a name on a door.

Registering your brand name as a trademark domestically or internationally can be a long, confusing process involving obscure governmental agencies requiring various fees at seemingly random intervals. Some of these demands are legitimate (International Bureau of the World Intellectual Property Organization notification that payment of a 2nd part fee is due in Swiss francs): but many others are NOT (WPAT s.r.o. invoice for 2738$ “on or before”, 2798$ “after”).

These solicitations arrive because the process of registering a trademark creates a public record. This means that anyone who infringes a registered trademark is not allowed to complain they did not know about the trademark but it also lets potential scam artists know that you have a trademark you care enough about to spend money registering.

But be careful not to be misled by the flurry of official looking invoices! Like this one:

Don't pay this invoice!
Don’t pay this invoice!

The United States Patent and Trademark Office warns against such scams, listing a number of examples (the above image was taken from their website).

If you have hired a trademark attorney to register your brand name for you, you need never pay any of the invoices yourself. Trademark attorneys will pay the legitimate ones on your behalf. In the United States and in most other countries, legitimate communications will be directed only to the trademark attorney and not to the trademark owner. When in doubt, just forward the communication to your trademark attorney.

If you are trying to negotiate the process yourself or just want to be able to spot wrongdoers, here is our list of red flags:

  1. Who dd it come from? Scammers like to use slight deviations from the correct names of the legitimate agencies. For example instead of “The United States Patent and Trademark Office”, the notice will come from entities such as the “Trademark and Patent Office” or the “United States Trademark Registration Office”.
  2. Where dd it come from? The real United States Patent and Trademark Office is located in Alexandria, Virginia. Beware of solicitations directing funds be sent to an address in New York or Philadelphia Pennsylvania. And, especially not Slovakia!
  3. Read the fine print. Some of the communications helpfully state that they are not legitimate (in a tiny difficult-to-read font, embedded in the middle of a long paragraph with otherwise unalarming factual information): “THIS PUBLICATION IS AN ELECTIVE SERVICE WHICH NEITHER SUBSTITUTE THE REGISTRATION NOR PROLONGS THE VALIDITY OF THIS TRADEMARK OR PATENT WITH U.S.P.T.O.”
  4. Watch the grammar! Typos, grammar and spelling errors are common in these types of scams. See the example in our red flag number 3…
  5. Check the website address. The real United States Patent and Trademark Office operates from the address USPTO.gov. Addresses such as patenttrademarkoffice.org, on the other hand, take you to a website that explains, in the “About Us” tab: “Headquartered in New York City, the Patent Trademark Office is the nation’s premier Trademark and Patent renewal service.” (ha!). Likewise, World Intellectual Property Organization (WIPO) operates from the address WIPO.int. Be suspicious of any address ending in a .com, .org or .us.
 Don’t fall prey to these confusing communications!

 

 

This week eight of the nine states voting on the issue said yes to cannabis decriminalization but the USPTO continues to say no.

Trademarkland takes a hard line against drugs, refusing to register any trademarks linked to cannabis. If anything, it has gotten even stricter on this issue over time. The law animating the USPTO, the federal Lanham Act, bars the registration of trademarks that are connected to “unlawful” uses.

While the USPTO seemed to invite companies to apply to register these types of trademarks in 2010 when it created a new trademark category: “processed plant matter for medicinal purposes, namely medical marijuana”, it quickly reversed course. Trademarks for marijuana, which is still illegal on the federal level (under the Controlled Substances Act), can’t be federally registered.

This summer the board overseeing the USPTO decided it could conclude from photographs submitted by a Washington dispensary that its “Herbal Access” trademark was being used for illegal services despite the fact that the owner never mentioned pot in his application. Then, a few weeks ago, the board issued another ruling refusing to register “JuJu Joints” as a trademark for marijuana vaporizers.

Trademarkland has jurisdiction over the entire United States but obeys its own set of rules.

It makes complete sense that a brand owner shouldn’t be able to lie to the Trademark Office when it tried to register its brand name as a trademark. Let there be consequences for making false statements! But it is not always that easy to avoid the fraud cow pie.

For example, when you file an application to register a trademark you are supposed to list the goods and/or services associated with that trademark. Cow pie alert!

In 2002, a medical device company stepped in the cow pie when it filed a required declaration stating it had used its brand name on “neurological stents and catheters” but it had in fact only been using the name on catheters. Penalty: its trademark registration was cancelled, even though the company attempted to come clean by amending it to delete the offending language (“stents”).

For the next six or seven years, fraud was all the rage.  Litigants brought successful cancellation actions — or threatened to bring them — against all sorts of trademark registrations, triumphantly arguing fraud had been committed against the Trademark Office. Suddenly there were cow pies everywhere.

In 2009, a higher court tried to clean the field up, emphatically stating that proof of intent to deceive is required to establish fraud against the Trademark Office.

You would think that would put an end to the mess, but no. Fraud is still alive and well as a potential cow pie. The Trademark Office is willing to, and often has, concluded that some sneaky strategic behavior by brand owners can amount to an intent to deceive. And litigants are still trying to prove that trademark applicants intended to deceive the Trademark Office.

Just this month, a trademark registrant escaped stepping into the pie (but no doubt had to spend a pretty penny doing so).

A car dealership using its brand name in southeastern Massachusetts accused a Maine car dealership of fraud when it failed to disclose the Massachusetts outfit’s use of the same name in its application to federally register the trademark.

A federal registration entitles its owner to the exclusive right to use the registered name in the United States. Because of this, applicants are required to swear they believe “no one else, to the best of his or her knowledge and belief, has the right to use” a confusingly similar name. The board reviewing the case decided that though the Maine car dealership was wrong (the board kindly termed it “mistaken”) when it made this statement, there wasn’t enough evidence to show it was actually fraudulent. Phew!

Fraud continues to be an issue that brand owners (and we lawyers) must keep an eye on.