Be Wary of Letters from Lawyers Claiming Your Company Name Is at Risk

September 16, 2024  |  Carole Clark Isakson

Over the last several months, we have seen an uptick in the number of false claims being made concerning company names. These claims come in the form of a letter from a lawyer warning the recipient that its business name is about to be “taken” by a third party. There is an offer of help, and frequently a claim that if the recipient doesn’t act, this unknown third party will file a trademark application on the company name and deprive the recipient of the right to use it. THESE CLAIMS ARE GENERALLY FALSE.

There is a difference between an entity name (i.e. for an entity that is created at the Secretary of State level) and a trademark, although they can certainly also be the same. A trademark designates the source of goods or services. It exists, meaning you own rights to it, when you start using it. One way to enhance the protection of a trademark is to file an application to register it with the United States Patent and Trademark Office—though you still own it and have rights to it even if you do not register it. This is a common misconception, and one that lawyers prey upon. Simply put, your company name is yours in the state where you created it. And if your company name is also your trademark, you will have prior rights to that mark as to the goods and services you sell in your market. 

The attorney scare letters we have been seeing are aimed at companies and read something like this: 

Dear President of Acme Motors,

We have been hired to file a trademark application for Acme Motors. This will happen unless you contact us immediately. If you don’t contact us and the other party trademarks the name ACME MOTORS, you will have to change your company name. 

Generally speaking, this is NOT true, unless of course the party filing for the trademark has been using the name longer and is in the same industry.

Without identifying myself as an attorney, I recently called one of these lawyers and asked him to explain this. I noted that I had received a letter. When I asked what would happen if we didn’t hire him, he said we would lose the right to our company name and would have to change it. I said we had been using it as our trademark for decades, and he said that didn’t matter. When I identified myself as an attorney and told him he was giving incorrect advice to people, he hung up.

There are a couple other ways to check these letters:

• The contacts will presumably come from an actual attorney (the last one a client received purported to be from an attorney who is actually a judge and has nothing to do with trademarks). 
• It is also unlikely that any legitimate attorney is going to reach out to a trademark owner/applicant to warn it that the lawyer is going to file a competing application.

Finally, the USPTO has addressed this on its website as well: https://www.uspto.gov/trademarks/protect/filing-firms. The attorneys at Barna, Guzy & Steffen have been filing federal and state trademark applications for clients for decades. We can help you with these and other trademark-related matters. Don’t hesitate to give us a call!