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Beware: Watch the Watcher

While the advent of online public filing is a huge convenience to the public and legal practitioners alike, there are potential hazards. An entire industry has emerged, calculated to confuse the trademark applicant and extract fees for “watch services” which for many clients are either unnecessary or overly broad. Even worse, applicants who file without the advice of counsel often find themselves the targets of multiple solicitations from attorneys, working a variation on the old-fashioned “ambulance chasing” theme.

This is a typical scenario:  A client has retained a trademark attorney, paid his or her fees and received notice that an application is pending. Since the address of the applicant is public record, clients now receive one, if not more, “invoices” or documents appearing to be a bill from an “official” government agency with names like the “U.S. Trademark Protection Agency” or the “Trademark Safeguard Protection Agency.”  Unfortunately, many unwitting people pay these “invoices.”

While a watch service can be important for some companies and trademarks, they are by no means required or necessarily useful.

A client whose products or services are not marketed worldwide has no need for an expensive worldwide watch service.  Most important, any experienced trademark professional can quickly engage the services of established companies and can help tailor a proper “watch” service to each client's needs and financial resources.

The other cottage industry is attorneys who troll the trademark filings for applicants without an attorney of record. The majority of those applicants will receive an official “Office Action” from the Trademark Office attorney assigned to the file. Shortly after, they also receive several solicitation letters from attorneys offering their services to respond. While there is nothing illegal about such conduct, it is important that the applicant who decides to seek legal counsel engage in proper due diligence to be assured their counsel of choice understands the issues involved, and whether proposed responses to the Office Action will be appropriate and achieve the goal of registration in a cost effective manner.

Read more about Trademark Registration & Monitoring Scams in this LA Times Article.