Extreme Caution: A Must When Dealing With Solicitations After U.S. Trademark Application

After filing an initial application for trademark registration, it can be problematic, too. The problem can start with a response to one or more of the solicitations from private companies, a problem that can be prevented if and when you exercise extreme caution when dealing with these offers.

Here are the things that you should be aware of about trademark-related solicitations.

Cold Calling Is the Norm

Solicitation come in two forms: first, an offer of service for trademark initial application; and second, a notice of an approaching trademark filing deadline accompanied by an offer of service. In both cases, there’s usually a fee for the performance of these services.

Your next question is: Why did you get these solicitations from private companies? Keep in mind that when you file a mark application with the United States Patent and Trademark Office (USPTO), the information on the application form will become part of the public database. As such, the general public can access your information including your full name and street address.

The private companies sending these solicitations use the USPTO database to identify the individuals and organizations that have filed applications and have upcoming filing deadlines. But always remember that you are never required by the USPTO and other regulatory agencies to use their services in any manner and form.

Beware of the Legitimacy of the Services

Let’s say that you consider the solicitation because it appears legitimate. But don’t plunge with both feet, however, as not all of the services offered are legal and legitimate. You have to exercise extreme caution in considering the types of services offered, especially if these seem too good to be true.

For example, offers for assistance in making an appropriate response to an office action (i.e., a letter from the USPTO detailing the substantive reasons for its refusal to register your mark). But if it’s an offer to record your trademarks in a non-public registry, you should ignore the solicitation – a private registry of trademarks isn’t recognized under present trademark laws in the United States.

Fortunately, you can easily tell the difference between official USPTO notices and potentially misleading offers. For one thing, the official correspondence regarding your initial application or maintenance of registration will be addressed as from the United States Patent and Trademark Office from its national headquarters in Alexandria, Virginia. All e-mails will have “@uspto.gov” as the domain name; if it isn’t, your alarm bells should be ringing.

For another thing, the notice from dubious private companies offering trademark registration services can have threatening words to emphasize the urgency of an upcoming deadline. Don’t believe the deadlines stated on these notices – instead, use the Trademark Status and Document Retrieval feature on the USPTO database to check the deadlines.

Ultimately, you have the responsibility to protect yourself against scams, especially as the USPTO doesn’t have the legal authority to prevent private entities from sending unsolicited offers and notices.

As the trademark application is quite professional, we suggest hiring an experienced trademark attorney for individuals and organizations.

資料來源: CtR智群知識產權事務所