Thank you to Commissioner Denison and all of the organizers for setting up this forum and for allowing me to share my experiences. I’m Eric Perrott and I am a trademark attorney with Gerben Law Firm. Our firm files about 700 applications every year. The majority of our services are flat fee prosecution services, including applications, search and risk assessments, Office Actions, and renewals.
Our clients are often new and small businesses and are juggling the day-to-day responsibilities of running a business while also trying to protect their trademarks. Our clients are often forced to deal with the issue of fraudulent solicitations directly without the filter of someone like in-house counsel. Even when we are working with general business attorneys, it is not always immediately obvious that these solicitations are fraudulent.
As a result, we get a question about these solicitations almost every other week. In most cases, our clients contact us to just to confirm that its a scam. Here are a few examples that are likely familiar to many of my small firm colleagues:
“I received the attached in the mail and just wanted to see if anything is required at this stage.”
“I received mail that looked legitimate, but upon researching further, this appears to be a company from the Czech Republic. Just wanted to confirm that this was a scam.”
“Attached is the renewal form I received – is this for real or is it a scam?”
However, a few have been upset or stressed out because they believe they missed a deadline or owed additional fees that we had already promised them were settled. For example, one client wrote us with the subject line “I THOUGHT THIS TRADEMARK WAS PAID” in all caps. The attachment to the e-mail was a scanned copy of a fraudulent solicitation. Another client wrote the following:
“I have several official letters.They all list my personal information and Trademark information and are official invoices each with warnings saying “Pay this amount by X date”. All of them want, on average, $2,500.00 each. What the hell is all this? Do I pay these invoices? Is my trademark in danger? What is going on?”
Our practice is based on the idea that you can hire an experienced trademark attorney for a flat fee to take the hassle and confusion out of trademark prosecution. When our clients receive these unsolicited mailings, it undermines our relationship with the client and ultimately undermines the integrity of the registration process itself. In fact, in one case, we had a client ask us if we had sold his information to someone overseas.
For a small firm, it is also an administrative burden, because we have a duty to ensure that we are not disregarding real demand letters or other correspondence that may require attention. Further, we are required to provide clients with warnings and other reminders throughout the process about these solicitations. When doing flat-fee work, every second spent on unnecessary issues cuts directly into our firm’s fees.
Gerben Law Firm supports and appreciate the aggressive enforcement against these individuals and I, personally, thank everyone today for the chance to discuss this matter.