Our firm will be making the following comments in today’s USPTO public roundtable on fraudulent trademark solicitations. (Agenda here.) Tune into the webcast at 2:00 PM EDT here.
Comments from Erik M. Pelton & Associates, PLLC Regarding Fraudulent Trademark Solicitations
Since 1999, Erik M. Pelton & Associates, PLLC® has registered more than two thousand U.S. trademarks for clients who are overwhelmingly small businesses. The firm is also the owner of numerous trademark registrations.
As the owner of several trademark registrations, EMP&A frequently receives mailed solicitations from entities calling themselves “Patent & Trademark Agency” or something similar promoting registry or directory services, or offering to handle trademark maintenance documents. On a weekly basis, the firm regularly fields calls or emails from clients questioning the documents or invoices received from entities such as the “Patent & Trademark Bureau.” Others call or email asking about the status of their trademark registrations and maintenance documents prompted by similar mailings. Many clients are confused because they were under the impression that they had already paid the government fees to register their mark or maintain their registration, or because they believed that their lawyer was on top of the matter and would notify them of any issues.
As a firm, our awareness of these solicitations is but a drop in the ocean. While we warn clients of these solicitations in our application and registration updates, it is impossible to know how many trademark owners take those to heart or even read these warnings. More troubling, it is impossible to know how many victims respond to these solicitations, either. While we have occasionally heard from upset trademark owners, we believe that the majority either do no realize that they have been duped, or are too embarrassed to admit that they have been defrauded.
The various services offered in these directory solicitations are problematic in many ways, perhaps most obviously in that they offer no value to trademark owners in exchange for large amounts of money. In years of discussing the solicited directory services with hundreds of trademark attorneys and thousands of trademark owners, we have not once heard anyone suggest that the directory services offered in these solicitations have any significance or purpose. Solicitations concerning trademark registration maintenance obfuscate the actual nature of services offered: it is never clear whether these solicitations are offering actual legal services providing legal advice about use, specimens, and other issues. If so, they rarely conform to rules of professional conduct concerning attorney advertising and solicitation. If not, their prices are extreme.
Taken as a whole, these solicitations impose great costs on the trademark registration system. The majority of trademark owners are small businesses, for whom the costs of trademark registration and maintenance are significant. The expenses imposed by these solicitation schemes interfere with the decision-making process of small businesses regarding the management of their trademark portfolios.
The misinformation and confusion caused by these solicitations negatively affects the ability of trademark owners to make informed choices about management of their trademark rights. Every dollar spent in response to a solicitation is a dollar not spent on effectively managing one’s trademark portfolio or growing one’s business.
Furthermore, these schemes dilute the messaging from the USPTO and the value of legitimate trademark services. A decision not to renew a registration or file a new application based on the costs, whether real or perceived, of a solicitation undermines the accuracy of the Register. At this moment, perhaps a nadir in public trust of government institutions and leaders, the integrity of the trademark register is more important than ever. Limiting public access to trademark data is not a viable option and warnings have proven ineffective. Instead, we implore the agencies here today to work together to stop these scam operations from preying on unsuspecting trademark owners.
Erik M. Pelton
Erik M. Pelton & Associates, PLLC®