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April 20, 2014

Warning About Trademark Fee Solicitations

The United States Patent and Trademark Office (USPTO) is warning trademark owners about fee solicitations from private companies that are not associated with the USPTO. These companies often have misleading names like “United States Trademark Registration Office" or "U.S. Trademark Compliance Service" and send solicitations that mimic official government documents. These solicitations typically include publicly available data like application and registration numbers, filing and registration dates and goods and service classes, giving them even more of an aura of legitimacy. While the documents may appear to be invoices for fees due to maintain your application or registration, they are actually fees for trademark watch services, for recording a trademark with U.S. Customs, or for other services that are not necessary to maintain your application or registration. 

All official correspondence regarding U.S. trademarks will be from the “United States Patent and Trademark Office” in Alexandria, Virginia, and if sent by email it will come from “@uspto.gov.” If an attorney is handling a U.S. trademark on your behalf, the USPTO will communicate only with your attorney and not directly with you.

Similar fee solicitations are also made in connection with foreign trademark applications and registrations. The Office of Harmonization in the Internal Market (OHIM), which handles trademark registrations in the European Union, maintains a list of companies that have made misleading requests for payments. The World Intellectual Property Organization (WIPO) maintains a list of warnings posted on government websites in several countries, and the International Trademark Association (INTA) has issued a similar warning to trademark owners.

For examples of misleading fee solicitations click here.

© MICHAEL BEST & FRIEDRICH LLP

About the Author

laura m. konkel. member, trademark law, michael best law firm
Associate

Laura Konkel is a member of the firm’s Intellectual Property Practice Group in the Milwaukee office. Her practice focuses on all aspects of trademark law including managing domestic and foreign trademark portfolios, prosecuting U.S. trademark applications, assisting in opposition and cancellation matters and infringement litigation proceedings.

414-225-2789

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