Author: Miia Sula
In the digital age, scams have become increasingly sophisticated. One such scam targeting small business owners involves trademark registration. Yesterday, my physical therapist received a threatening email from a company claiming to provide trademark registration services. The email stated that he had 24 hours to inform them if he wanted to register his business name as a trademark or be sued for trademark infringement by another party who was going to register it. Fortunately, he did not hesitate to reach out to me for help. It did not take much time to see that it was a scam. Here are some of the red flags from their email communication that other small business owners should be aware of:
1. “A business who has not registered their name as a trademark does not enjoy trademark rights”
This is incorrect. To enjoy trademark protection on your business name under common law, you only need to use it in commerce.
2. “If another company or individual secures the trademark before you do, they will prevail, irrespective of the duration of your current usage“
Again, incorrect. First-to-use a business name in commerce always wins over a later registration.
3. “We have the flexibility to decline proceedings with the other party if you are interested in securing ownership of the brand name today”
Each state has a state disciplinary board that enforces state ethics for licensed attorneys. Ethics rules prevent a licensed attorney to ditch their current client in order to take a new client when taking that new client would mean their current client would lose their rights to register the same trademark, as they clearly indicate here. By just telling you they have a client who is going to register that trademark already breaks their attorney-client privilege, which is not acceptable under the ethics rules.
4. Is the person contacting you a licensed attorney?
The USPTO rules require that any person or company offering to provide filing and registration services on behalf of others must be a US licensed attorney. You can ask for their bar license number and the state where they are licensed, and check if they are properly licensed.
Luckily, my physical therapist did not pay the fees this company was requesting him to pay to register his business name as a trademark, but it teaches a valuable lesson on pitfalls these small businesses could easily fall into. The United States Patent and Trademark Office has recognized the rise of these scams and provides additional information on how to detect a hoax and how to report one in the webpage. Of course, you should always consult with a trusted legal advisor before making decisions that could impact your business. Always stay vigilant and informed to protect your business from such scams. If you found this information helpful, please consider sharing it with other small business owners. Together, we can help protect our businesses from such scams!
Miia Sula is an attorney in the Patent Prosecution group. Miia began her work with RQN in March of 2021 while she was a JD candidate at the Franklin Pierce School of Law at the University of New Hampshire. Although Miia graduated from law school in the United States in 2022, she has substantial prior experience in law. Miia has two Master’s degrees, one from the University of Tampere, Finland, in Mathematics and Statistics (2000) and a second one from Tampere University of Technology, Finland, in Industrial Engineering and Management (2009). She received a Master of Law from Queen Mary University in London, England, in 2016.