In what many professionals in the trademark field consider to have been long overdue, a lawsuit has been filed against USA Trademark Enterprises, Inc. of Sarasota, Florida. USA Trademark Enterprises is one of numerous companies that use publicly available U.S. Patent and Trademark Office (USPTO) information to solicit individuals and businesses with trademark “publication” offers.
When a trademark application is submitted to the USPTO, the desired trademark and the ownership information of the trademark applicant become publicly accessible information that may be viewed by anyone with access to a computer. USA Trademark Enterprises, among others, see this as an opportunity to solicit the trademark applicant with what may be deemed as useless services in exchange for a fee. Generally, an official looking letter is sent to an applicant offering to “publish” their trademark in one of various trademark databases, most likely owned and published by the sender of the letter. The lawsuit alleges that these letters intend to prey on trademark applicants’ lack of familiarity with the trademark application process, are meant to confuse them into believing that the letter originated from the USPTO, and that payment of the fee is necessary for their trademark be “allowed” or “published for opposition,” which are steps in the trademark application process. The suit alleges that this behavior amounts to fraud and constitutes an unfair business practice and false advertising.
Although the letters state, in small print, that payment of the fee is not mandatory and that the letter is “an offer, not an invoice,” from my experience, this is not enough to avoid confusion. I’ve had to address questions about such letters from dozens of clients. Upon receipt of the letter, they usually call me to ask whether payment of the fee contained in the letter is necessary. In most instances, the conversation begins with their expression of frustration that they have to pay a fee about which they were not informed by me as their attorney. I routinely tell such clients to disregard the letter. This clouds the legitimacy of any trademark related communication.
A convoluted constitutional law discussion may be had on whether such letter senders are acting within their First Amendment rights, but that is not my intention herein. It is uncertain whether such opportunistic companies will ever cease to exist. Therefore, it is important for all trademark applicants, upon the receipt of any letter pertaining to their trademark, to contact their attorney or trademark administrator to find out if the letter was sent from their office, or from the USPTO. No trademark applicant, under any circumstances, should pay any fees contained in such letters without first confirming the source of the letter and whether payment is necessary for their trademark’s registration.
While companies like USA Trademark Enterprises can latch on to the transparent argument that “this is a free country,” and that no laws were broken by their conduct, it is similarly true that a “free country” allows these companies to be sued if someone feels damaged or wronged by their conduct. Since a great number of trademark applicants are confused by these letters, one can say this lawsuit is overdue.
Benjamin Ashurov is a trademark attorney with the law firm of Raj Abhyanker P.C, the top trademark filing firm in the U.S. His aim is to bring exposure to trademark bullying and to help victims who feel helpless in the face of bullying attempts.