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Trademark Applicants: Beware of Watch Service and Representation Solicitations
© Cheryl Hodgson 2007 | Posted on September 11, 2007
This article first appeared in Thomson Compumark Client Times, July 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 for many clients are either unnecessary, or overly broad. Even worse, applicants who dare to file without the advice of counsel, often find themselves the targets of multiple solicitations from attorneys, working a variation on the old-fashioned "ambulance chasing scheme."
Even my firm, Hodgson Law Group (HLG) was when it filed to protect our "goose that laid the golden egg". 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: The client has just retained a great trademark attorney, paid his or her fees, and received notice that an application is pending. Since the address of the applicant is public record, clients now 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."
The client calls 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 $1,890.
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. For example, a client whose products or services are not marketed worldwide has no need for an expensive worldwide watch service.
Most important, any experienced trademark professional can quickly engage the services of established companies in the field, like Thomson CompuMark, 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 who decides to seek legal counsel engage in proper due diligence to be assured their counsel of choice understands the issues involved, and whether proposed response to the Office Action will be appropriate, and achieve the goal of registration in a cost effective manner.
While HLG and most other practitioners now do their best to forewarn clients in advance, some clients inadvertently pay these companies for unnecessary services. In my view, It's time the Trademark Office take its role of preventing consumer confusion a bit more seriously when protecting the public from confusing Trademark Office imposters!
About the Author: Cheryl Hodgson is a principal with the Hodgson Law Group, a law firm specializing in trademark and copyright law, brand protection and entertainment law, based in Beverly Hills, California. She may be contacted at chodgson@hodgson-law.com
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