Misleading trademark solicitations are becoming an epidemic. Trademark owners beware!
If you have registered a U.S. federal trademark, you may know that you must periodically make certain filings to maintain or renew your registration. For most post-registration maintenance filings, there is a one-year window in which to make the filing and a six-month grace period following the deadline. Nevertheless, unscrupulous companies are sending out misleading notices and invoices which scare trademark owners with statements such as:
Your trademark is about to expire. Sign and return this document to renew your trademark.
The notice or invoice may look official and display all the information for your trademark—the registration number, date, etc. It will likely be addressed from the “Patent & Trademark Office,” or “Trademark Bureau,” or some other official-sounding office. But many of these notices are scams! Often the “deadline” is not a deadline, but in fact the opening of the window in which the trademark owner is able to take action to maintain the trademark, with the real deadline falling a year or more later. Or the solicitation might be for publication of the trademark in an private and unnecessary database or registry.
Somewhere in the fine print, the notice may explain that the sender is not actually a government agency, but sometimes it is difficult to determine. If you worked with a law firm or an attorney to register your trademark, you may wish to contact your attorney to verify any deadlines and to confirm whether the notice is legitimate, especially before you pay any money. Many attorneys maintain a docketing system and will send reminders to their clients at the appropriate time.
The United States Patent and Trademark Office provides a warning list of misleading solicitations, with images of each scammer’s typical letters, on its website. The growing list has at least 50 known offenders. As it explains on that page, “All official correspondence about your trademark application or registration will be from the “United States Patent and Trademark Office” in Alexandria, Virginia, and all emails will be from the domain ‘@uspto.gov.’” Be wary of any official-looking communication or notice that does not come from the USPTO.
For international trademark filings, the World Intellectual Property Organization (WIPO) “Warning” page, provides examples of similar solicitations for international registrations.
If you have received a trademark-related solicitation or notice that you think is a scam, or if you have paid one of these companies for unnecessary services, you may also wish to submit a consumer complaint to the FTC. Or contact your state consumer protection authorities for help.