Trademark owners have long been targeted by fraudsters attempting to solicit them for trademark services by sending communications deceptively made to look like formal notices from official-sounding entities like “United States Trademark Agency,” “US Patent and Trademark Bureau,” “United States Trademark Registration Office.” These “notices” are generally designed to separate businesses from their money by creating a false sense of urgency on the part of the recipient regarding false upcoming renewal deadlines, the need to pay unnecessary filing or other fees, or the imminent intent to register a conflicting name or trademark by an unidentified (and probably non-existent) third party.   

In recent months, we have been seeing a new type of fraudulent solicitation. In these solicitations, seemingly legitimate lawyers or law firms are offering to register a business’ name as a federal trademark. The general script is as follows:

A business by the name of Acme Company (“Acme Company 1”) receives an email or a letter from someone purporting to be a trademark lawyer. The lawyer claims that they have been contacted by another business (“Acme Company 2”) with a request to register “Acme Company” as a United States trademark. The lawyer explains that before they can file the registration for Acme Company 2, they are required to conduct a search to determine whether there are any existing uses of the name, and in doing so, they discovered Acme Company 1. The lawyer goes on to state that if Acme Company 1 has any objection to the registration of the name by Acme Company 2, then the lawyer would be happy to file a trademark application to register the name for Acme Company 1 instead of for Acme Company 2. The email continues with the warning that if Acme Company 1 fails to respond to the email, or elects not to file to register its name as a trademark, then the lawyer will register the name on behalf of Acme Company 2 and Acme Company 1 could ultimately be forever barred from using its business name.

Setting aside for the moment the very valid question of whether it makes sense for Acme Company 1 to register its name as a federal trademark, there are a number of problems and red flags with this particular type of solicitation:

• First, there is no law, rule, or even best practice that would compel an attorney who is purportedly representing Acme Company 2 to reach out to Acme Company 1 to notify them of the potential that another party is considering registering its business name as a federal trademark.
• Second, it would in fact be a serious breach of the rules of professional conduct applicable to lawyers, for a lawyer who is asked to file a trademark on behalf of Acme Company 2 to reach out and inform Acme Company 1 of the lawyer’s intentions, and then agree to file the trademark instead for Acme Company 1.
• Third, there is no law that requires Acme Company 1 to communicate to the lawyer its objection to the filing of the name on behalf of Acme Company 2 and failing to so communicate does not by itself waive any rights Acme Company 1 may have acquired in its name nor its ability to ultimately register its name as a federal trademark. 

If you have questions about whether to seek federal trademark protection for your business name, or if you receive any suspicious notices regarding renewal or other services related to your existing trademarks, you should seek counsel from a reputable trademark attorney. In most cases, if you are already working with an attorney in connection with the registration and maintenance of your trademarks, all legitimate communications regarding your trademarks will come from your trademark attorney and not from another law firm or so-called “official” agency. 

If you have further questions about trademarks for your business or IP-related questions in general, please reach out to partner Scott Landis or any member of Barley Snyder’s Intellectual Property Practice Group.