Case Targets Deceptive Trademark Solicitations

Applicants and registrants of trademarks are inundated with offers to perform potentially unnecessary services. These solicitations often come in the form of invoices, with prominent and false "due dates." Other times, they resemble official USPTO communications, on letterhead and with an envelope designed to appear as though it came from a government agency, and with a request for instructions and payment. The solicitations purport to offer a variety of services, including publication services, watch services, registration services, domain name‒registration services, renewal services, and more.

While trademark practitioners have long cautioned clients to disregard these notifications, last week one law firm, Leason Ellis LLP, took a more dramatic action—it filed suit against Patent & Trademark Association Inc., or PTMA, in federal court in the Southern District of New York.