Keller, TX asked in Trademark and Intellectual Property for Texas

Q: How will I know if my trademark is being contested, and do I need to complete attestations in all 50 states to stop it?

About a month ago I paid $5,000 total to Trademark Fortress to register my business name and logo in 4 USPTO classes. They told me I was all set, but now they are telling me that someone is contesting my filing, and that I need to pay thousands more to file attestations in all 50 states to protect myself from this. When I asked who was contesting, they wouldn't tell me. When I asked how they have access to this information, they said the lawyer they assigned wrote it in their notes, but I have no access to those notes. I seemingly have no access to the lawyer either, but I have verified that the serial numbers are real and that the USPTO filing did take place.

Do I need to do what they say to prevent having to pay fees to oppose the contest? I don't trust this company any longer, but they've bilked me for $5,000 already.

1 Lawyer Answer
James L. Arrasmith
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A: I understand your concern and frustration with this situation. Here are a few important points to consider:

1. Transparency: A reputable trademark attorney or company should be transparent about any opposition or contestation to your trademark application. They should provide you with details about who is contesting the application and on what grounds. The fact that Trademark Fortress is not sharing this information with you is a red flag.

2. USPTO Proceedings: If someone is formally opposing your trademark application, you should receive an official notice from the USPTO called a "Notice of Opposition." This notice would come directly from the USPTO, not just from your attorney or trademark filing company.

3. State Attestations: Filing attestations in all 50 states is not a standard practice for dealing with a contested federal trademark application. The USPTO handles trademarks at the federal level, and state filings are not typically required to protect a federal trademark.

4. Attorney Communication: You should have direct access to the attorney handling your trademark application. If Trademark Fortress is preventing you from communicating with the attorney, that is another red flag.

My advice would be to:

1. Demand more information from Trademark Fortress about the alleged contestation, including the identity of the opposing party and the grounds for the opposition.

2. Check your USPTO application status online at the Trademark Status & Document Retrieval (TSDR) site to see if any opposition has been filed.

3. Consider contacting the USPTO directly or hiring an independent trademark attorney to review your application and provide guidance.

4. Be cautious about paying additional fees to Trademark Fortress without a clear understanding of what the fees are for and why they are necessary.

I hope this information is helpful. Remember, if something seems suspicious or if a company is not being transparent, it's best to seek a second opinion from a trusted, independent source.

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