If you have recently incorporated a business or filed for a trademark with the United States Patent and Trademark Office (“USPTO”), this may sound familiar…
You receive a notice in the mail purportedly from an official state agency containing an official-looking seal, telling you that you need to file an annual report by a certain deadline, or you will be subject to fines and penalties. The notice has specific information about your entity, including information about officers and directors and your corporate ID number, and references state statutes requiring certain periodic filings. It then solicits payment from you for said filings and includes a return payment envelope.
You receive a mailing from the “Patent and Trademark Office” saying that you have a renewal filing due in the next year and that you need to remit the fee for the renewal. The notice contains many details regarding your trademark, including the serial number, date the application was filed and specific renewal dates. They state that you must remit payment to them for the filing, or your mark will be cancelled.
In each case, you are confused because you have already paid the state or USPTO fees, and have maintained consistent contact with your attorney, who may not have mentioned any deadlines or filings that are due. You wonder whether you should just pay it to avoid jeopardizing your entity or trademark. DON’T!
In nearly every case, these are deceptive and/or fraudulent solicitations generated by private third party agencies with the goal of taking your money under false pretenses. Buried within the (VERY!) fine print of each of these notices, you will find the legally required disclaimer language stating that it is not generated by an official government agency, something along the lines of: [company] is not a government agency and is not affiliated with the Secretary of State or any other government agency,” or that it is a solicitation. If you pay the fees, you end up with a record keeping service that you did not need, or your trademark ends up on some unofficial global register that no government entity ever tracks or uses. In the worst cases, your money is gone for good with nothing to show for it.
Sadly, these deceptive marketing campaigns are so pervasive that most government agencies have added explicit warnings to consumers on their websites (for example: California Secretary of State: https://www.sos.ca.gov/business-programs/customer-alerts/alert-misleading-solicitations-statements-information; USPTO: https://www.uspto.gov/trademarks/protect/caution-misleading-notices). Trying to keep up with the multitudes (and variations) of solicitations has proven nearly impossible.
If you have fallen for the scam, it is important to remember that these mailings are designed that way. Even if the notice contains the legally required disclaimers in the fine print, the companies that send these solicitations are hoping that business owners will focus on the official-looking language and imagery, and not the fine print disclaimer.
How Can You Tell? Tips for Handling Mailers
Unfortunately, there is no way to stop the mailers from coming, but you can be prepared when they arrive.
Before paying anything that you receive in the mail: (a) read the solicitation very carefully and all the way to the end (including the fine print) to find out who sent it and what they are offering – if it is not an official government agency, it is almost certainly a scam; (b) consider and verify whether you actually have any deadlines or renewals coming up – keep on top of your filings and deadlines so that you can readily determine whether the stated deadline could be valid, even if the solicitation is not, (c) double check the Secretary of State website, or the USPTO website to see if there is anything outstanding related to your entity or trademark – going to the source is the best indicator of whether a solicitation has merit, and (d) ALWAYS feel free to reach out to us at Scherer Smith & Kenny LLP to verify the veracity of the mailing. Our strong preference is that you come to us when in doubt. We can quickly and easily confirm whether any action must be taken, and help you avoid throwing money away.
Sample Company Names Used in Filings
The entity names for these solicitations are almost always generic, but with a state or official agency in the name. For example:
Delaware Council for Corporations
California Corporate Records Company
Corporate Records Service
WTP Trademark Publication
Patent and Trademark Office
United States Trademark Register
California Corporate Filing Services
Corporate Filing Services Center
…to name a few.
Reporting Scam Mailings
Finally, we strongly encourage you to report misleading solicitations to the Secretary of State or Attorney General of the state in which you are incorporated in the case of state-related solicitations, and the Federal Trade Commission in the case of USPTO-related solicitations. Regulatory agencies have been cracking down on fraudulent mailings to the extent they can, enforcing heavy fines and in some cases taking legal action. Reporting helps them to have an ongoing picture of how the solicitations are adapting.
- Written by Heather G. Sapp