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Trademark Applicants Beware of Mailbox Solicitations
© Cheryl Hodgson 2007 | Posted on May 15, 2007
By Cheryl L. Hodgson
© Hodgson Law Group 2007
While the advent of public filing information on line is a huge convenience to the public and legal practitioners alike, there is a dark side. An entire industry has emerged, calculated to confuse the trademark applicant, and extract fees for "watch services" which are often unnecessary for many clients. Even worse, applicants who dare to file without the advice of expert counsel, often find themselves the targets of multiple solicitations from attorneys, working a variation on the old-fashioned "ambulance chasing scheme."
Our firm was recently targeted when it filed to protect our goose that laid the golden egg. (See below). For several years, HLG has written and called the U. S. Trademark Office urging the government to take action against some of the worst abusers. One company's name is so close to that of the Trademark Office, that recipients of these solicitations have been deceived into thinking the mailing is coming from the U.S. Trademark Office, the agency charged with preventing consumer confusion!
It works like this. You've just retained a great trademark attorney, paid your fees and received notice that your application is pending. Since your address as applicant is of public record, you receive one, if not more, "invoices" or documents appearing to be a bill from an "official" government agency with names like the "U.S. Trademark Protection Agency" or the "Trademark Safeguard Protection Agency." You call your attorney asking: "Why didn't you tell me I'd be receiving a bill for another $400-500 from the government?" Worse yet, international companies are now joining in the action, sending invoices to U.S. applicants for up to $1890.00.
Unfortunately, many unwitting people pay these "invoices." While a watch service can be important for some clients and trademarks, they are by no means "required" or even necessary. For example, clients whose products or services are not marketed world wide had no need for an expensive world-wide watch service.
Most important, any experienced trademark professional can quickly engage the services of reputable companies in the field who have years of experience, and often perform the same service on a less costly basis when and as needed. Trademark counsel can help tailor make the proper "watch" service to each client's needs and financial resources.
The other cottage industry which is flourishing are attorneys who troll the trademark filings for applicants without an attorney of record. The majority of those applicants will receive an official "Office Action" from the Trademark Office attorney assigned to the file. Shortly after, they also receive several solicitation letters from attorneys offering their services to respond. While there is nothing illegal about such conduct, it is important that the applicant in need of legal counsel to respond assure themselves their counsel of choice understands the issues involved, and whether the proposed response to the Office Action will be appropriate, and achieve the goal of registration in a cost effective manner.
Unfortunately, while HLG does its best to forewarn clients in advance, some clients inadvertently pay these companies for unnecessary services. Please be careful of these solicitations.
Technorati Tags: Consumer Fraud, Intellectual Property, Legal, trademark, trademark registration
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