30
Jan/12

Corn Dogs With Your Catalog of US Trademark Registrations? – Leason Ellis Sues a "Trademark Listing" Service For False Advertising


The websites of the US PTO,  OHIM,  WIPO and many national trademark offices all have variations of warnings such as this appearing on the UK website:

“We would like to warn customers about a business practice that is on the increase. This practice has caused concern to many of our customers.

A number of companies are sending unsolicited mail to applicants for, and owners of, intellectual property rights eg trade marks, patents and designs. These invite the recipient to sign and return a document and pay a fee for a particular service.

Many of our customers have told us that they thought the mails came from an official source and thought they had to use, and pay for, the services offered. Examples of the types of services being offered are described below. You should be aware that these companies are not linked to any Government or Community Institution and there is no obligation to pay the fee.”

We include a similar warning in correspondence to our clients.  Nevertheless,  clients ask whether they must pay such solicitations.

Our firm received a registration for the LEASON ELLIS and ‘apple tree of inspiration’ design, and received a solicitation from U.S. TRADEMARK ENTERPRISES of Florida to pay a fee to be included a ‘catalog’ of trademark registrations.  The front of the ‘communication’ implies that publication in the catalog will assist in trademark protection.  The terms of service buried in their website disclaims that.

Our firm has  now sued U.S. TRADEMARK ENTERPRISES, alleging federal false advertising and state unfair competition torts.  We view the disclaimer in the terms as an admission that the defendant is aware that the services don’t achieve the advertised purpose of the offering (in this case, maintaining trademark rights).  That is a tort in NY State.

It is unclear whether these ‘catalogs’ of trademark registrations were ever in fact distributed.  The website alleges that these catalogs are to be distributed at fairs (like state fairs? With corn dogs?)

We look forward to hearing from any one who has had dealings with these ‘registries.’

 LE v US Trademarks

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