A couple weeks ago I filed a trademark application on behalf of a client. Simple word mark, standard classes, everything done online via a TEAS+ application, no big deal. This week, I received a rather official-looking email from Trademarkia regarding filing deadlines. I thought it was problematic when I first saw it, then I did a little digging and I’m officially disgusted with the law firm behind it.
One of the truly excellent things about the US Patent and Trademark Office and the trademark application process is that it’s largely online. That of course means that when the application is published to the world, it’s also done online. If it’s published online, that means someone can write a bit of code to grab the information off the application (like my email address) and automatically fire off a solicitation. This is an issue with any kind of online database. Massachusetts incredibly has almost all of its Registries of Deeds online, so when my friend bought his condo he started getting notices in the mail that it took even me a few looks to determine were bogus solicitations for ridiculous services (and I practice real estate law and look at real estate documents frequently). I can only imagine the well-meaning individuals that official-looking ads ensnare, convinced they have a legal obligation.
So earlier this week an email comes through with the subject line, “Timeline and Next Steps with MARK NAME trademark application – Notices,” (with MARK NAME of course standing in for the actual name of the mark I applied for). Now, I’m still pretty new at this, and with a TEAS+ application you specifically authorize the USPTO to communicate with you via email, so I immediately assumed this was an official email, until of course I got to reading. What eventually becomes a pitch for business incorporation services starts like this:
You have applied for a trademark application for the MARK NAME trademark with the United States Trademark Office. Please confirm that the information shown on the MARK NAME trademark page below is correct.
LINK TO TRADEMARKIA LISTING
Here are some important deadlines that you should be aware of, as well as a timeline for next steps:
Once you click the link, you’re taken to a page containing all the info from the trademark application, surrounded by adds for all kinds of legal services, media, etc. At this point, though, it’s just a moderately annoying spam email designed to trick the recent trademark application filer into clicking a link and hopefully sticking around the website long enough to click some more links or buy one of their ready-made legal products. In other words, it’s a little distasteful, but what spam isn’t?
The next thing I found however, is a company blog post, featured on their home page, that re-posts thisUSPTO alert warning consumers against unnecessary services deceptively marketed so as to appear to be coming from an official source. GAH! Using the USPTO’s warning’s about your own dubios business practices to game search engine traffic? Really? That’s just infuriating.
Of course, then I read this New York Times article about the founder, an attorney, and discovered that he uses Trademarkia to funnel legal work to his own law firm, growing from a solo practice in 2009 to a multi-national practice in 2011. So let me get this straight: a lawyer founded a company and is now using that company to send unsolicited, arguably deceptive, communications to every trademark applicant, including those already represented by counsel? He just created his own lead generation service, wrapped it up in the clothing of a startup, and that’s ok? To be clear, the email is sent out by a separate company, not a law firm, but the CEO of that company just happens to be the sole partner in the firm that the company sends the legal work to, and both share the “Legal Force” branding.
Eric Turkewitz, Scott Greenfield, and the boys at Lawyerist have frequently said that when an attorney outsources their marketing, they’re outsourcing their ethics. What happens when you outsource your marketing to your own lead generation company? Do the ethics go with it then?
And this is all entirely separate from the fact that I can’t really get behind a business model that encourages individuals to file trademarks in the cheapest way possible, and then charges them an “attorney response fee” for every inevitable office action that comes back.
So yeah, watch out for Trademarkia.
From Trademarkia in the comments –
There are a number of important inaccuracies in your post, Please note:
1. We only send messages to listed legal correspondents, not owners.
2. We comply with all federal and state law regulation with respect to public service notices including the CAN-SPAM act, and include easy unsubscribe capabilies.
3. We make it clear we are not the USPTO and that recipients are receiving this email because rather are the legal correspondent for a company, not the uspto.
We regularly review our compliance with all rules governing emails and the profession, and have ethics counsel to this effect. If there are specific things you think we should add to our emails, please let us know and we will consider them. However, the central premise of your post is incorrect in that we only contact legal correspondents.
I’ll respond point by point so as to keep things organized.
- To the extent that I implied that Trademarkia sends emails to “owners” as opposed to “legal correspondents,” I was incorrect. I don’t have any doubt that Trademarkia has a policy of only sending emails to the addresses publicly available for “legal correspondents.” Since someone represented by counsel would have that counsel as the “legal correspondent,” the email wouldn’t go to the “owner.” If there was a weird filing where the “owner” was represented by counsel but that counsel wasn’t the “legal correspondent,” Trademarkia wouldn’t know that. So to the extent that I may have implied that Trademarkia was contacting people it knew to be represented by counsel consider this my formal retraction, full stop.The point of all those quotes though is to point out that in most cases, the difference between “owners” and “legal correspondents” is one of semantics, since where an owner files on their own (and this is presumably Trademarkia’s target marget with their emails), the “owner” IS the “legal correspondent.” Since the main point of my post was to point out the troubling aspects of these emails as sent to individual owners, this distinction is essentially meaningless, because in all the cases where there’s cause for concern, the “owner” and the “legal correspondent” is the same person.
- I didn’t make any accusations in my original post about breaking any laws, no do I here. Frankly, I’m not familiar enough with the laws involved to provide any kind of useful analysis on that topic off the top of my head. Rather, what my post discussed was the common sense dubiousness (dubiosity?) of Trademarkia’s practices in light of not only what I feel is the underlying value to the average applicant of the services they perform, but also the fact that they are linked to and funnel a tremendous amount of business to a law firm, an entity that I would hope would have higher standards for their marketing, regardless of whether it runs afoul of any laws or ethical standards. To respond, then, that my post was inaccurate because Trademarkia is in compliance with all relevant laws is to take down an argument never made and displays a lack of understanding about what I found so troubling in the first place.
- First, the email can be viewed here as a PDF (edited only to remove my client’s mark), so people can read it and make their own judgment. Beyond that, I don’t think it is entirely clear that it’s not from the USPTO prior to following the first link, which is the whole intention of the email, to get you to the website. This is for two reasons: 1) nowhere in the subject or in text prior to the link does Trademarkia identify itself, you’d have to inspect either the From address or the link address to know where it’s coming from, my guess is most people just start reading the email; and 2) the email starts out by asking you to confirm your information submitted to the USPTO; why would a third-party solicitation be asking you to confirm the information you submitted to the USPTO?As such, it seems to me that this email is designed to give the impression for the split second before you click the link or decide to read on that this is an official communication. My guess is that for many, like myself, it does. In that way, it doesn’t matter that the website clearly doesn’t belong to the USPTO, and that the rest of the email discusses the wonders of Trademarkia in a way that makes it clear the communication is not from the USPTO. Again, I don’t think that the email breaks any laws in this sense, it’s just common sense sleazy, and I’d expect better from a company that essentially functions as the marketing arm of a law firm.With all of that said, I’ll raise the point again that I make in the original post: in doing this, Trademarkia is using the same techniques that the USPTO has seen become such a problem that they have to specifically warn consumers against them on their website. Trademarkia knows this, because they’ve reprinted that warning on their own website. While this email isn’t as bad as some of the examples cited in that warning, it certainly falls on the same spectrum. In light of that knowledge, any claim that Trademaria makes regarding technical compliance with the law simply rings hollow.
So Trademarkia would like suggestions (I’ll overlook that they’ve once again failed to identify the central premise of my post). Here’s a suggestion: make the beginning of your subject line, “SOLICITATION FROM TRADEMARKIA,” and make the very first line of your email, “THIS IS A SOLICITATION FROM TRADEMARKIA, A THIRD-PARTY SERVICE PROVIDER NOT IN ANY WAY ASSOCIATED WITH THE U.S. PATENT AND TRADEMARK OFFICE.” I suppose the click-through rate on that would be lower though.
[For clarification purposes, Trademarkia originally responded in the comments of this post, which is reproduced above. Due to my own issues with administering WordPress databases, my site was wiped for a few hours and I lost the original comment posting. Their follow up to my follow up is below.]
Thank you for your feedback. We hear your suggestions, are considering implementing aspects of them.
Trademarkia Customer Service