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Does the Trademark Office Need a Trademark Attorney?

Posted in Counterfeits, Infringement, SoapBox, Trademarks

–Dan Kelly, Attorney

A few times each year, clients will call or write and inquire about some official-looking correspondence they’ve received about a trademark registration or application.  That happened this week, and here’s the top portion of the official-looking correspondence (redacted):

You can see the full page here.  If you read the fine print, this letter from the “United States Trademark Registration Office” is a solicitation, not an official notice from the United States Patent and Trademark Office (“USPTO”):

This is one of the more egregious examples I’ve seen.  Most modern correspondence with the USPTO takes place electronically, so it is uncommon in the first place to see hard copy correspondence from the PTO.  If a private law firm or attorney is handling your company’s trademark, it is highly unlikely that your company will receive correspondence directly from the USPTO as well.  The modern electronic forms bear little resemblance to the above document, but rewind just a few  years, and you can see some similarities (granted, government documents are not renowned for their distinctive look and feel):

The USPTO periodically notifies the public and practitioners about these sorts of scams, but you have to hunt for the notices.  I found a couple here and here, but neither discusses the “United States Trademark Registration Office.”  The irony here is that the USPTO does not have registered trademark rights in its own name.  I would think that the government probably has legal recourse, if not under trademark at common law, then perhaps mail fraud or some other statute, although the “United States Trademark Registration Office” seems to be trying to insulate itself from such an action.

A short primer on U.S. government IP rights can be found here, and you may also want to review a similar scam I blogged about last year concerning the World Intellectual Property Organization (“WIPO”).