What’s in a Name? Dealing with Trademark Registration Services
By Nathan Behncke, Associate Regulatory Compliance Counsel
Tell me if you’ve heard this one before: If you don’t register your trademark, someone else could claim the same name and gain the exclusive rights to use it, preventing you from doing the same.
Several of our credit unions have reported contact from an attorney claiming that if the credit union does not register its trademark by the end of the day, the attorney will proceed with registering the same trademark to another party. The contact will further state that a trademark conflict constitutes a violation of civil laws, which may subject the credit union to legal exposure.
These threats come from businesses called Trademark Swipe, Trademark Apex, Trademark Smart Filing, Mark Mastery, or similar, usually with contact information for an attorney out of New York or San Francisco. These names have all been registered recently, use the same contact information, and are more than willing to accept payment through PayPal, Wire Transfer, Western Union, or cryptocurrency.
We want to reassure you that this is not a legitimate service. While a trademark can be necessary in some instances, no credible company will use the threat of trademark infringement to sell registration services.
Entities that are not a credit union are not permitted to use phrasing that would mislead a consumer into believing that the entity is a credit union. NCUA manages the charter process for credit unions so that no two entities are permitted to use the same legal name. State regulators retain similar rights to determine credit union names for state-chartered credit unions with the right to prevent other entities from using credit union sounding-names that might mislead consumers.
If you are contacted by one of these entities, we would encourage you to disregard the email. Several websites have already reported more information about this scam, and you can read about those at the following links:
Again, there are times when a federal or state trademark registration is appropriate. This often occurs when your credit union uses a trade name that sounds like another credit union (or even another non-bank entity), or when your credit union looks to operate in another geographic area and wishes to avoid confusion with a similarly named business. For example, a federal-chartered credit union may not use “federal” in their trade name, which may conflict with the full legal name of a nearby state charter. A trademark registration will settle these kinds of disputes.
If you are wondering whether your credit union should apply for a state or federal trademark or continue to operate with neither, we do advise that you consult with your preferred counsel as to the best option for you. A state trademark provides protection against a person using your name within the state of registration, while federal registration provides the same protection throughout the country.
If you have questions, please contact Information Central at 512-853-8515 or compliance@cornerstoneleague.coop. You can also reach Nathan Behncke at nbehncke@cornerstoneleague.coop or by phone at 512-853-8514.
