Recently, some of our clients received trademark "scam" solicitation letters from what appears to be the United States Patent and Trademark Office ("USPTO"), but these are actually commercial trademark renewal services that are not affiliated at all with the government, let alone the USPTO.  These letters notified our clients that their registered marks would be cancelled unless they paid money immediately to the trademark renewal service.  If you receive one of these letters, please know that they do not originate from the USPTO and they often contain inaccurate information with regard to renewal deadlines, governmental fees, and the status of your registered mark.

Should I be receiving any correspondence from the USPTO?

If we represent you with regard to trademark matters, then the answer is no.  In this case, we have taken the necessary steps to update the correspondence address with the USPTO so that it reflects our address.  Thus, all correspondence from the USPTO is sent to us and we promptly correspond with you regarding the substance of the communication from the USPTO.

How do these trademark renewal services get my address in the first place?

When a trademark application is filed, the USPTO requires the address of the owner of the mark.  All information relating to your trademark application is publicly accessible via the USPTO website.  These companies harvest these records and then send you unsolicited correspondence regarding the upcoming expiration of your mark unless you send them money to renew the mark.  Once again, the information contained in these letters is often inaccurate and sometimes intentionally contain false information in an effort to entice you into paying them promptly for their "service."  Also, the fees that are charged are generally inflated.

What are the names of some of these trademark renewal services that I should be wary of?

Names of such companies include the United States Trademark Maintenance Service (Houston, TX), the United States Trademark Center (Washington, D.C.), Trademark Info Corp. (AG) (New York, NY), and others.

What steps should I take upon receiving a trademark renewal notice?

You can contact these companies and request to be removed from their mailing list.  If you have any questions about whether or not to respond to such a notice, please feel free to contact us with any questions you might have -- we strongly advise you to contact us prior to sending a response and/or any money to these companies.  Please know that these are generally "scam" solicitations and they should be ignored and discarded.

How can I proactively deal with this issue?

Educate and alert employees, partners, and others about these solicitations so that they are aware of how to handle them and what to do upon receiving them.

If you have any questions, concerns or comments, please contact Ralph F. Manning, Esquire at 412.594.5540 or rmanning@tuckerlaw.com or Lee Kim, Esquire at 412.594.3915 or lkim@tuckerlaw.com of the Tucker Arensberg, P.C. Intellectual Property and Technology Law Group.

CLIENT ALERT:
YOUR DUTY TO PRESERVE ELECTRONICALLY STORED INFORMATION
 

By: Steven B. Silverman, Esq.

On December 1, 2006, the U.S. Supreme Court enacted new Federal Rules of Civil Procedure related to electronically stored information ("ESI"). Although the Rules essentially formalize prior court decisions and apply solely to suits in federal court, state courts are sure to adopt similar rules. The new Rules impose some important obligations on all businesses, including non-profits and governmental entities. Given that over 90% of all documents and correspondence are now created electronically but less than 30% of those electronic documents are ever converted to paper, these new Rules are likely to have an impact on how everyone conducts business.

Essentially the Rules require a business to take certain steps to preserve potential electronic evidence in the event the business is sued or reasonably anticipates being sued. Prior to the enactment of these new Rules, a business already had an obligation to preserve "paper" documents, but these new Rules formalize the need to preserve ESI and address unique scenarios which this presents.

The failure to preserve dispute-related ESI can be disastrous if litigation ensues. When a party to a lawsuit fails to preserve potential evidence when they had an obligation to do so (known as "spoliation"), they can be sanctioned by the court and their opponent may be entitled to certain evidentiary advantages and concessions that often can result in the opponent winning the case outright. For these reasons, it is critical for you to familiarize yourself with the following issues:

1. The Triggering Event. If your obligation to preserve ESI begins when you reasonably anticipate being sued, when does that occur? The answer is that there is no bright-line rule and that each instance must be evaluated on a case by case basis, taking into account the business' sophistication and previous experience with litigation. Certain scenarios, however, are more obvious than others. For example, the duty to preserve ESI would be triggered by an employee who files a complaint of discrimination with a supervisor, or with an administrative human rights agency like the EEOC. The duty to preserve ESI would also be triggered when a demand letter is received regarding a particular business dispute, or when an employee related accident occurs, such as involving a car or machinery. It is also critical to remember that the duty to preserve ESI is triggered when the business contemplates initiating litigation itself, and not just when it expects to be sued.

For these reasons, every business should consult with legal counsel to identify potential scenarios where its obligation to preserve ESI automatically kicks in.

2. What Must Be Preserved and How. Once a duty to preserve ESI occurs, what exactly has to be preserved and how should it be done? Unfortunately, the answer as to "what" is almost everything in any way related to the dispute or potential dispute that exists electronically. This includes emails, files, sub-files (including versions and drafts), Excel spreadsheets, Power Point presentations, voicemails, electronic calendars, draft documents and meta data. (Meta data is in essence concealed data within an electronic document or file and may include the file name, author, formatting information, embedded comments, and even history as to when a document was created, modified or accessed.)

It is critical from the outset to determine not just what types of ESI must be preserved, but more importantly what subjects and information could possibly be related to the dispute at issue. Always consult with counsel and err on the side of being overly inclusive. And lastly, do not forget about preserving paper documents as well.

How to preserve dispute-related ESI is equally as involved as deciding what to preserve. First, coordinate with your IT personnel, who along with you and/or your counsel should oversee the preservation process. Next, identify key players involved in the dispute, as well as those likely to have relevant materials. Those individuals must be notified as soon as possible to prevent them from destroying ESI inadvertently or otherwise. Your IT personnel must also take certain steps like pulling back-up tapes and preserving networked data and emails from servers. Keep a written record of what was done to preserve the dispute-related ESI, detailing who did what and when, in the event that you are challenged during litigation on what you did or could have preserved.

3. Revise Your Document Retention Policy. The new Rules on preserving ESI make having a written document retention policy more imperative than ever before. Prior to the enactment of the Rules, every business needed such a policy to ensure the preservation of business-critical information and information that the law already required businesses to preserve (such as documents related to ERISA (6 year preservation requirement), the Family Medical Leave Act (3 years), the Fair Labor Standards Act (3 years) and OSHA (5 years)). But now under the new Rules, a document retention policy can justify why certain ESI no longer exists, as long as there was no reasonable expectation of litigation ensuing. As with paper documents, it is simply not economically feasible or practical to preserve all ESI. Therefore, businesses must set forth in writing how, why and when ESI is no longer maintained. Finally, your document retention policy should include all the processes and procedures for implementing your dispute-related ESI preservation process. Again, this should be done from both a business perspective (to serve as a blueprint for how this process should work), as well as from a litigation perspective in the event you are challenged during a suit as to why certain ESI may not have been preserved or found. Those revisions to your document retention policy should be made after consulting with both your IT personnel and your counsel.

These new Rules make clear that courts will become more wiling to punish parties who fail to preserve relevant ESI. Therefore, it is imperative that you work with your counsel to make sure that you implement the necessary steps detailed above to comply with these new Rules.

 

Steven B. Silverman is a shareholder in the firm’s Litigation Department, and is Co-Chair of the firms Technology/Intellectual Property Practice Group. For more information on this topic, please contact Steve at 412.594.5609 or via e-mail a ssilverman@tuckerlaw.com.

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