Archive for the ‘Intellectual Property Law’ Category

Mar
13

Patent Licensing Agreements: Ensuring They Won’t Thwart the Patentee’s Rights to Damages in a Later Patent Infringement Lawsuit

Attorneys often categorize themselves as either only transactional or only litigation attorneys. The fact is that legal documents, whether drafted by a transactional attorney specifically retained to draft an agreement or “grabbed off” the Internet, may become the subject matter” of a lawsuit, either directly as in a breach of contract claim or indirectly as where an agreement fails to properly address statutory requirements pertinent to the contact.   The latter situation is discussed in the Federal Circuit Court of Appeal’s Feb. 19, 2020 decision in Arctic Cat, Inc., v. Bombardier Recreational Products, Inc.

Arctic Cat is the owner of two patents directed towards thrust steering systems for personal watercraft (“PWCs”). Although it initially sold the inventions before the patents had issued, Arctic Cat later entered into a license agreement with Honda for several patents including the PWC patents.  Somewhere along the licensing negotiating process, the provision requiring Honda, as the licensee, to mark all licensed patented products with the applicable patent numbers was deleted.  The final version even expressly stated that Honda had no marking obligations.  This provision was contrary to the requirements of 35 U.S.C. § 287 and case law involving the interpretation of that statute.

Section 287(a) provides in pertinent part:

Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into United States, may give notice to the public that the same is patented . . . by fixing thereon the word “patent” . . . . In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.

The notice provision of § 287 does not apply to patents directed to processes or methods. Nor does it apply if a patentee never makes or sells a patented article; such a patentee may recover damages even absent notice to an alleged infringer.  On the other hand, the patentee who either directly sells the patented article or indirectly introduces into the market through a licensee, cannot collect damages until it either begins providing notice or sues the alleged infringer.  Any resultant damages are limited to the period after notification.  A patentee can cure the marking dilemma by beginning to mark (or have the licensee mark) its products in accordance with § 287.

The public policy behind § 287 is threefold: to (1) help avoid innocent infringement; (2) encourage patentees to give public notice that the article is patented; and (3) aid the public to identify whether an article is patented.   Arctic Cat at 8 citing Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1443 (Fed. Cir. 1998).   Failure of a patentee to inform the public that an article is patented is deemed problematic because of its potential to mislead others into believing they are free to make and sell an article that is actually patented and then finding themselves on the receiving end of a patent infringement lawsuit.

The statute also actually provides incentive to the patentee to sell marked products so as to maximize its damages in any subsequent patent infringement lawsuit by a “knowing” infringer. That is, the marking statute imposes notice obligations on the patentee.  Whether or not the alleged infringer may have had mere knowledge that unmarked patented articles were actually patented is irrelevant.  A patentee who does not comply with the marking statue cannot later claim entitlement to “willful infringement” damages without establishing that the alleged infringement had been put on proper notice.

The duty to mark is not limited to the patentee but is also imposed on any licensee or assignee. Arctic Cat at 6.   The licensing/assigning patentee has to demonstrate that it made reasonable efforts to ensure any third parties’ compliance with § 287 to the satisfaction of the court.  Inexplicably, the licensing agreement between Arctic Cat and Honda expressly stated that Honda had no obligation to mark the patented PWCs.   As such, in its later filed infringement lawsuit, Arctic Cat was in no position to argue that it had made reasonable efforts to ensure labeling.  The “wrong” provision included within the patent licensing agreement with Honda executed years before proved fatal from a damages maximization perspective.

And this begs the question:  Who drafted that licensing agreement and why was the original provision referencing marking deleted?  Did Arctic Cat’s authorized representative understand the implications of what he was signing?  Did its transactional attorney explain the consequences?

From our perspective, the Arctic Cat decision drives home the point that a faulty transactional agreement may well mess up a party’s rights in a future lawsuit.  Faulty agreements can range from unartful, overly verbose, and ambiguous wording to provisions that are inexplicably contrary to federal and/or state statutory requirements and public policy.  The latter should never happen at least when a transactional attorney is involved.  Any such attorney must have a thorough understanding of the legal area the agreement involves to determine how much latitude may be incorporated into the agreement without running afoul of governing law.  Failure to do so denotes sloppy work.

The commentator handles both legal disputes involving intellectual property rights including patents and drafts and negotiates complex licensing and assignment agreements.  In my opinion the preferred approach to drafting these and other types of agreements is to draft with an eye toward future litigation whether between the parties to the agreement or a third party as in the Arctic Cat case.  Such agreements should also be drafted by an attorney with experience in the subject matter.

Considering licensing your intellectual property? Contact us to see how we can provide value to you or your company from drafting the licensing agreement from scratch through negotiating the draft (or a previously existing draft) with the other party to the agreement.  Our services including taking care to explain the agreement in detail to our clients and providing a summary of the agreement’s provision to provide for ready reference.  

WE HOPE YOU FIND THE ARTICLE INSTRUCTIVE.  HOWEVER, THE INFORMATION PRESENTED IS NOT LEGAL ADVICE AND IS PROVIDED FOR INFORMATIONAL PURPOSES ONLY.

© Troy & Schwartz, LLC 2020

Where Legal Meets Entrepreneurship™

 

 

 

Jul
21

A REGISTERED TRADEMARK APPLICANT MUST BE THE OWNER OF THE MARK UNDER SECTION 5 OF THE LANHAM ACT.

On July 2, 2019, the Trademark Trial and Appeal Board (“TTAB”) sustained the opposition to the mark HOLLYWOOD HOTEL by finding that the mark was void ab initio because the Applicant was not the owner of the mark.   Hollywood Casino, LLC v. Chateau Celeste, Inc., Opposition No. 91203686.

An application is void if it is filed by a person or entity that is not the owner of the mark.  By definition, the owner of the mark is the one that controls the nature and quality of the goods and services under the mark.  This requirement is consistent with trademark law’s focus on preventing consumer confusion over who is providing the goods/services under the mark.

Here, the opposer had the burden to prove that the Applicant was not the owner at the time of filing of the opposed application.  HOLLYWOOD HOTEL was owned as a common law mark starting in 1994 by Zarco Hotels.   Applicant Chateau Celeste, Inc. filed the application for the HOLLYWOOD HOTEL mark in 2011.  The application was subsequently opposed by Hollywood Casino, LLC on likelihood of confusion grounds.  During the course of discovery, the opposer ascertained from the testimony of the Applicant’s president that Chateau Celeste was not the actual owner of the HOLLYWOOD HOTEL mark under the law.  The TTAB granted the opposer the right to amend the complaint to include a count that the mark was not registerable because the Applicant was not the true owner of the mark.

The opinion is instructive because it emphasizes the importance of ensuring that the applicant and the mark owner are one and the same.  First, as the Hollywood Casino decision establishes, an application filed by a non-owner is void from the start.  Second, even if the application somehow makes it through the registration process without an opposition proceeding, ownership issues may arise in any future trademark infringement litigation proceedings; it is the owner of the mark who generally has standing to bring such lawsuits.  Third, ownership issues may also arise in a later cancellation proceeding brought by another party before the TTAB.

The ownership in a mark, whether registered or common law, may pass to another through a formal assignment of rights.  The USPTO encourages recordation of “registered mark” assignments to establish a public chain of title.  Trademark assignments often arise when a business is purchased where registered or common law or state trademark rights are acquired as part of an asset purchase or stock purchase. Additionally, ownership may pass without a formal assignment if one company becomes the owner of mark by controlling its use by a related company, e.g., by a subsidiary.

Importantly, licensees are not the owners of trademarks.  Indeed, any licensor of trademarks has the obligation to ensure that the licensee is maintaining the nature and the quality of the goods and services associated with the licensed mark.

At the time the HOLLYWOOD HOTEL mark was filed, there were two separate companies in existence where one individual was an officer and controlling shareholder in both and both of the companies had the same address.  This is the same individual whose deposition resulted in the opposer’s amended complaint.   The TTAB deemed this commonality as being insufficient to make the companies related for ownership purposes under Section 5 of the Lanham Act.  The Applicant, Chateau Celeste, Inc., would have to establish that it, not the individual officer/shareholder, controlled the nature and quality of the services rendered by Zarco Hotels, the corporation actually using the mark.  Because Zarco Hotels and Chateau Celeste constituted separate legal entities and Zarco Hotels was the owner of the physical property itself, the TTAB concluded the application was filed by the wrong legal entity and hence void.

Take Home Points

  1. It is important to ensure that applicant in any trademark application is the owner of the mark – i.e., the one who is using or will be using the proposed mark in commerce.
  2. Assignments of marks should be memorialized in a formal writing. Assignments involving registered marks should be recorded with the USPTO.
  3. Assignment during the prosecution of a trademark application may be allowed but only under certain circumstances.
  4. Acquiring licensing rights in a trademark is not equal to ownership of the licensed mark.   A licensor has an on-going obligation to monitor the licensee’s usage of the mark.

 

THANK YOU FOR READING THIS BLOG.  PLEASE SHARE IT WITH ANYONE WHO MIGHT BENEFIT. AS ALWAYS, THE CONTENT IS NOT LEGAL ADVICE AND IS PRESENTED FOR INFORMATIONAL PURPOSES ONLY.

 

© Troy & Schwartz, LLC

Where Legal Meets Entrepreneurship™

 

 

 

 

 

 

Jul
05

ANOTHER TRADEMARK APPLICATION BITES THE DUST BECAUSE OF UNACCEPTABLE SPECIMENS!

Imagine having a proposed mark meet the requirements for overcoming a finding of likelihood of confusion or mere descriptiveness only to have the mark rejected for registration as the result of insufficient specimens. As this post discusses, specimens can make or break a trademark application.

THANK YOU FOR READING THIS BLOG.  PLEASE SHARE IT WITH ANYONE WHO MIGHT BENEFIT.  AS ALWAYS, THE CONTENT IS NOT LEGAL ADVICE AND IS PRESENTED FOR INFORMATIONAL PURPOSES ONLY.

Perhaps no other area of trademark application prosecution is more misunderstood by applicants than the requirement that specimens must show use of the proposed mark with the applicant’s specified goods or services. The commentator, Susan D. Troy, who is in charge of the business and intellectual property law practice areas for the law firm, has previously posted blogs on this important topic. Today’s post relates to the Trademark Trial and Appeal Board’s (“Board”) recent affirmance of the refusal to register the mark THE CARDIO GROUP & Design for the Applicant’s failure to submit specimens reflective of the Applicant’s services.  In re The Cardio Group, LLC  (TTAB June 20, 2019) [precedential] (Application SN 86840860).

The application’s specified services under international class 35 were for “retail store services featuring medical devices.” The Board found that the Applicant is clearly engaged in selling products. Nevertheless, the inclusion of the words “retail services” suggests that the Applicant’s products were either being sold being sold in a brick-and-mortar location, on-line, or via catalogues. The Applicant, however, did not provide specimens showing how the mark was being used in the “retail services” arena. This commentator notes that maybe the original description of services incorrectly used the word retail.

In reaching its conclusion, the Board focused on “whether the evidence of Applicant’s use of its mark creates an association between the mark and the Applicant’s retail store services.” Importantly, the specimens must show a direct association between the mark and the service activity [or goods] and the source of the services [or goods]. To create such a “direct association,” the specimens must contain a reference to the service and identify the service and its source (generally the applicant which may be an entity or an individual).

Here, the Applicant submitted a website screenshot, a confidential sales agreement, and an invoice, all displaying the proposed mark. The website specimen merely presented the results of an analysis from a medical device and no information that the Applicant was making the device available for sale on-line, by personal sales calls, or otherwise. The invoice likewise did not refer to any activity that might be considered a retail store service. The commentator notes that invoices are generally not acceptable specimens for goods or services but can serve as a proof that the mark was in in commerce as of the invoice’s date. Additionally, why the Applicant, would have provided a confidential sales agreement as a specimen that becomes available to the public at www.USPTO.gov is indeed puzzling.

The Board concluded that the Applicant’s specimens of use were unacceptable because they failed to show the mark used in connection with the specified “retail services.” Although the Applicant is engaged in selling products, “nothing in the documents submitted by Applicant … refer to a retail store (of either on-line or brick-and-mortar variety) or create an association of any kind between THE CARDIO GROUP and design and a retail store service.”

In assessing the adequacy of specimens, the USPTO must consider any explanations offered by an applicant that “clarify the nature, content, or context of use of the specimen that are consistent with what the specimen itself shows.” See In re Pitney Bowes, Inc., 125 U.S.P.Q.2d 1417, 1420 (T.T.A.B. 2018); In re DSM Pharms., Inc., 87 U.S.P.Q.2d 1623, 1626 (T.T.A.B. 2008). Here, the Applicant stated that its services are in the nature of activities provided by a retail store – i.e., it is selling goods – and it argued that such activities do not have to take place in an actual retail store. The Board noted that retail stores services may be offered in various ways, including through physical locations, catalogs, or on-line, but the Applicant’s specimens did not suggest that any of these retail “avenues” were being used to make the medical device available in interstate commerce.

The Applicant also tried to amend its description of services to retail sales services, but the Board found that the proposed change simply restated that applicant’s specimens “reflect a product sale” and not that any retail store services were provided in selling the product. Considering all the specimens along with Applicant’s explanations, the Board found “no direct association in any of the specimens between THE CARDIO GROUP and design and any type of retail store service.” The Board emphasized that the specimens had to establish that the mark and design were a source indicator for retail services. Emphasis added. Nothing in provided specimens demonstrated to the Board’s satisfaction that consumers would perceive THE CARDIO GROUP and design as a source indicator for retail store services. “Ultimate consumers who choose to purchase Applicant’s products very well may understand they are engaging in a retail sales transaction with Applicant, but even if this is assumed, it would not establish that such consumers, prior to making their decision to make such a  purchase, were exposed to any advertising or promotion of Applicant as the operator of a retail store selling medical devices.”

In conclusion, specimens can make or break a trademark application. Don’t let this situation happen to you!

A Note to Trademark Applicants

Trademark applicants who become the clients of Troy & Schwartz, LLC will understand the requirements for specimens for 1A applications from the get-go. Attorney Susan Troy also works closely with clients for whom intent-to-use applications are filed to ensure that the subsequent specimens will comply with the USPTO’s requirements by keeping in contact with these clients to discuss the specimen creation progress.  For example, she reviews websites where screen shots are to be provided as specimens to ensure that they are presented in the manner required for “website page” specimens and will make suggestions to the website designer where changes are required in her opinion to comply with specimen requirements. This hands-on approach is an example of the added value of working with our firm to achieve your trademark registration and branding goals.  We are about providing value in all our attorney-client relationships.

© Troy & Schwartz, LLC

Where Legal Meets Entrepreneurship™

 

Jun
03

Maintaining Registered Trademarks & Patents – Do It or Lose Your Rights!

  • Background

So you or your company have met the requirements for receiving a registered trademark or patent from the United States Patent and Trademark Office (USPTO). Your efforts to obtain these valuable intellectual property rights (especially for the patent) involved considerable costs ranging from legal fees to filing fees charged by the USPTO and maybe even an appeal. Does your success in obtaining a registered trademark or a patent mean that your “interaction” with the USPTO is now over and done with? Not if you wish to retain your trademark registration and patent rights!

Both registered trademark rights and patents require the payment of maintenance fees to the USPTO to maintain their “active” status. Additionally, the owner of registered trademarks must also establish periodically that the mark is still in use to enjoy the benefits of registration. Patents, on the other hand, need never be practiced to enjoy continuing patent rights during the effective patent term providing the maintenance fees are timely paid.

Unfortunately, many patent and registered trademark owners are not aware of the ramifications of failing to pay maintenance fees until it’s too late. This article summarizes important information related to maintaining the active status of registered trademarks and issued patents.

  • Maintenance of Registered Trademarks

The USPTO is required to strictly comply with the federal statute governing registered trademark maintenance fees.  Failure to timely pay the maintenance fees will result in administrative cancellation of the mark by the USPTO. These fees are due within the 5th and 6th years of registration, the 9th and 10th years of registration and every 10th year thereafter. Once cancelled as the result of non-payment of the required maintenance fee, the only way to again acquire registration rights in that mark is to file another trademark application and go through the prosecution process again.

This new trademark prosecution process may not necessarily result in registration of the mark that had been cancelled. This commentator encountered such a scenario with a client who had inadvertently failed to pay the maintenance fee by the 6th year of registration on a valuable registration originally obtained by the client. The commentator was retained to file a new application for the cancelled mark. The new examining attorney initially refused registration of the mark as being merely descriptive despite the fact that the same mark had once been registered. The commentator was able to obtain registration of the mark on distinctiveness grounds.

Proving distinctiveness to the satisfaction of the USPTO is no easy task as the case law demonstrates and can be a very costly endeavor because of the legal fees. The commentator’s client would have appealed any final rejection by the examining attorney to the Trademark Trial and Appeal Board (TTAB) because of the value of mark. Appeals are expensive and time-consuming. Additionally, statistics available for TTAB decisions show that examining attorneys’ rejections are affirmed more often than not. Hence another reason for ensuring that trademark registration fees are timely paid to prevent a situation where a new examining attorney may conclude that the “re-filed” mark does not qualify for registration.

In addition to paying the maintenance fee, the mark owner must file documentation with the maintenance fees declaring that the mark is still in use and provide specimens proving as such. As long as the declaration and specimens are filed according to the above specified schedule and the declaration/specimens meet the requirements USPTO’s requirements, the registered trademark will remain in effect with three exceptions: (1) it becomes cancelled as the result of a cancellation proceeding filed with the TTAB by a third party; (2) it becomes cancelled as the result of a trademark infringement lawsuit in federal court wherein the court issues an order directing the USPTO to cancel the mark; or (3) it is voluntarily cancelled by the registrant, the mark’s current owner, or the registrant/owner’s legal representative. See 37 U.S.C. § 1904.07(a).

Registered trademarks that end up being cancelled by the USPTO for any statutory reason will be designated as cancelled in the records of the USPTO. Registered trademarks may also be cancelled by a federal court to which a party (petitioner or registrant) in a TTAB cancellation proceeding has appealed the TTAB’s cancellation decision.

The actual trademark registration maintenance fees due are dependent upon the number of international classes designated for the registered trademark. If the trademark owner is no longer using the mark with one more of the designated classes in a multi-international class registration, then the declaration should indicate as such and request deletion of the “inactive” classes of goods/services. The payment due is based on the number of “remaining” classes and the registrant must provide specimens showing how the mark is still being used with the “remaining” classes.

A registered mark may remain in effect indefinitely providing declarations/fees are timely submitted to the USPTO and accepted and assuming that the registered mark is not cancelled as the result of one of the above three specified scenarios. That is, there is no statutory “cut-off” period for enjoying registered mark status.

  • Maintenance of Patents

Maintenance fees on utility patents in the United States are due 3½, 7½ and 11½ years after grant of the utility patent. In contrast to many other countries, no maintenance fees are due while a US patent application is pending.  Maintenance fees are not required for design patents and plant patents.

Patents have a defined lifetime generally equal to twenty (20) years from the application’s filing date; the actual expiration date is determined under the patent term extension statute where the 20 year date may be adjusted to a later or earlier date according to the patent’s prosecution history. Patents therefore have a cut-in-stone expiration date while registered trademarks may last indefinitely.

Patent maintenance fees may not be paid in advance; the patentee must wait until the payment window opens six months before the due date before paying a maintenance fee. At the end of the half-year window during which a maintenance fee may be paid, a six-month grace period begins during which a patentee may still pay the maintenance fee along with a small surcharge. The maintenance fees are determined on the basis of the patentee’s designated status: large entity, small entity, or micro entity. This status must be reasserted with the payment of each maintenance fee.

If the maintenance fee has not been paid at the conclusion of the grace period, the patent expires for non-payment of maintenance fees. In contrast to trademark registrations for which the declaration/maintenance fee was not timely filed, a patentee may file a petition indicating that the non-payment was unintentional. This petition must be timely filed and there is no guarantee that the petition will be granted and the expired patent reinstated.

Patent claims may be invalidated as the result of proceedings involving the USPTO’s Patent Trial & Appeal Board (PTAB) (see 35 U.S.C. § 311) or by federal court order resulting from: (1) a patent infringement case wherein the alleged infringer successfully argues that at least some of the patent claims should be invalidated; or (2) an appeal of a PTAB decision to the court. As long as an issued patent has claims that are not invalidated as the result of proceedings before the PTAB or a federal court, maintenance fees will be due.

  • Assignment of Registered Trademarks and Patents

The assignee of any registered trademark or patent rights will generally assume the responsibility of paying any future maintenance fees as the mark owner and filing the required declaration/specimens. Any assignment document should always specify which party has the obligation to pay the maintenance fees. Assignees should always ensure that any assigned trademark registration or patent is full effect and that the assignor is indeed the legal owner of an “active” trademark registration or patent. Recordation of any trademark or patent assignment with the USPTO is highly recommended. Licensors of trademarks and patents are generally responsible for paying the maintenance fees, but any licensing agreement should nevertheless clearly state who has the obligation to do so. The licensor remains the owner of the registered mark or patent.

  • Ensuring that Valuable Registered Trademark and Patent Rights Are Not Lost for Failure to Maintain

Large companies generally have procedures in place for monitoring the status of their trademark and/or patent intellectual property. The in-house legal team, if any, is generally involved in monitoring the “active” status of the company’s IP.

Startups and small companies, on the other hand, often do not have a formal mechanism in place for ensuring that the future required maintenance fee dates are adhered to.  Furthermore, these time periods occur over a period of many years and can easily be “forgotten.” It is thus highly recommended that any entity owner of any registered trademark and/or patent adopt a procedure for annually reviewing the status of its intellectual property by designated managers/officers to ensure that maintenance dates are kept on the radar. Additionally, a department and/or employee should be assigned the responsibility of ensuring compliance with registered trademark and patent maintenance fee/document filing requirements by the due date. Payments/filings are preferably made “earlier” rather than “later.” Proof of payment/document filings should be maintained with the other records associated with the corresponding patent or registered trademark.

For registered trademarks, either in-house counsel or outside counsel should be consulted if there are any questions concerning the declaration/specimen documents that will need to be filed with the USPTO to ensure that the registration status will remain in effect. The USPTO will reject declarations that do not meet statutory requirements, including establishing that the declaration filer is the owner of the registered mark.

  • A Brief Comment on Copyright and Trade Secret Lifetimes

Although not discussed above, registered copyrights enjoy decades of protection under the copyright statute and maintenance fees are not required. Trade secret protection can last for decades or far beyond the lifetime a patent providing, of course, that the trade secret remains just that – secret. The best example of a long-time trade secret is the formulation for Coca Cola.

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The foregoing is not legal advice but is provided for information only. Contact the office to receive a complimentary checklist for monitoring the status of your valuable IP at sdtroy@troyandschwartzlaw.com. The commentator is available to assist clients in obtaining and maintaining intellectual property rights protection as well as protecting their valuable intellectual property from the unauthorized use by others at a predictable, reasonable legal fee.

© Troy & Schwartz, LLC 2019

Where Legal Meets Entrepreneurship™

Jun
03

A Practical Tip for Trademark Registrants & Applicants – Don’t Fall for Trademark Scammer Scare Tactics!

It seems that clients for whom our law firm has obtained registered trademarks are receiving more letters from scammers than in the past. One client reported receiving five different scammer letters in one week!  These letters are purposely intended to suggest that: 1) the letter was sent from the United States Patent & Trademark Office; or 2) the scammer is a recognized affiliate of the USPTO authorized to send such correspondence.  The USPTO’s website has a notice warning the public about these scam tactics.  Also, the USPTO sends out a notice with each Registered Trademark Certificate warning the trademark owner about “scamming” activities by third parties.

For our trademark clients, we provide a detailed letter specifying the future dates by which the registered mark/patent owner must take “action” to maintain the active status of the mark/patent. One thing is for sure:  the inadvertent loss of registered trademark rights resulting from the failure to properly maintain a registered trademark can have serious, costly consequences.  Don’t let that happen to you by failing to understand your date-specific obligations as a registered trademark owner. See the website’s blog on Trademark and Patent Maintenance Fees.

Many of the commentator’s clients have forwarded copies of scammer letters which have actually specified wrong trademark registration date information! The sender also requested hefty fees without any detail as to what the suggested fees cover or the information that the third party will require from the registered trademark owner or applicant to comply with the USPTO’s maintenance requirements. What these scammer letters all have in common is the following: a request to send money!

By way of example, one long-time client recently received a letter from a scammer by the name of PTMI (Patent & Trademark Institute) purporting to be a “register of trademarks.” No physical address was provided.  For $765.00, PTMI would apparently list the client’s registered mark in a data base under the scammer’s control for one year.   This type of service is a joke since all countries through a bona fide governmental intellectual property agency such as our own USPTO list all existing registered marks, abandoned marks, and cancelled marks.  Additionally, the World Intellectual Property Organization (WIPO) also maintains records of registered marks throughout the world.  There is absolutely no need to pay a third party to list one’s registered mark.  Such a data base would also be useless for trademark search purposes since it’s highly likely the data base would be incomplete or provide incorrect information.   This commentator would not even rely on any information provided in “sketchy” data bases when conducting a trademark or “knockout” search and neither would other trademark attorneys.

Another client received a notice from Glo Trade, S.R.O. requesting over $2800 to monitor the client’s soon-to-be registered trademark for one year. The notice indicated a registration date for the client’s mark even though the application is at the publication stage.  The incorrect notice doesn’t provide much confidence that Glo Trade, S.R.O. would do a decent job of tracking conflicting marks if it can’t even get the client’s registration date right, does it?  The commentator notes that there are legitimate companies for tracking potentially infringing applied-for trademarks; these legitimate companies do not send out solicitation letters.

Registered trademark owners who do not already have a trademark attorney are welcome to contact contact us at (305) 279-4740 about any “scam” letters they receive to verify for their own peace of mind that the letter is indeed from a “scamming” third party.   We will provide the complimentary service of checking the caller’s trademark registration date/patent issuance date based on USPTO records to determine the next actual date by which the trademark/patent owner must take action to maintain the active status of the trademark/patent.

If the caller requests us to do so, we will handle the steps required for maintaining a trademark(s)/patent(s) at an attractive legal fee that will be substantially less than what the scammer hopes to obtain for questionable services. The owner of a trademark registration can also always file the required documentation directly with the USPTO to maintain a registered trademark.  The owner just needs to make sure that all representations to the USPTO are accurate and comport with the USPTO’s requirements.

We hope you find this blog useful.   However, it is not legal advice and is provided for informational purposes only!

 

© Troy & Schwartz, LLC 2019

Where Legal Meets Entrepreneurship™