BEWARE OF SCAMS INVOLVING TRADEMARK RENEWAL SOLICITATIONS
Q: Businesses, entrepreneurs and other organizations often own at least one trademark registration, sometimes many more depending on their industry. What should trademark owners know about the renewal process?
A: A U.S. trademark registration must be renewed between the fifth and sixth years and between the ninth and 10th years after registration, and then every 10 years thereafter. If a trademark owner fails to file a renewal during these periods, or within the six-month grace period, the registration will lapse. Unfortunately, there are a number of unscrupulous companies that seek to cash in on the renewal process by duping trademark owners into paying unnecessary fees or buying unnecessary services by making them believe the fees are required by the U.S. Patent and Trademark Office (USPTO).
Q: What do trademark owners need to know about these solicitations?
A: The number of companies making these solicitations is on the rise because they’re so effective in deceiving the public. For example, the soliciting company name will typically sound official or governmental, such as “Patent & Trademark Association,” “Trademark Compliance Center” or “Trademark Renewal Service.” Using information that’s publicly available from USPTO records, these companies typically time the mailing of these “urgent” notices to coincide with the trademark renewal windows. Such notices usually will include an official-looking document that appears to be an invoice for renewal services, but the fine print indicates it’s merely an offer, not an invoice, and that the company isn’t affiliated with the USPTO. It’s important to note that these solicitations aren’t limited to renewal services. Some companies offer additional services — for additional fees, of course — to publish, monitor, protect, watch or register trademarks, domain names and other intellectual property.
Q: What’s at risk if a trademark owner is duped into responding to one of these solicitations?
A: At best, the company offering the services will provide the service — often at an inflated price — and sometimes replace the trademark owner’s attorney with the soliciting company as the trademark owner’s representative at the USPTO. At worst, the company will take the money and provide no services, incorrectly provide the services and botch the renewal, or provide unnecessary services such as publication in a worthless online catalog. While many of these companies are based in the United States, a number are based in foreign countries such as the Czech Republic, Hungary, Poland and the Slovak Republic.
Q: What’s being done to crack down on these activities? A: Little progress is being made to curb these activities. Late last year, the U.S. Department of Justice announced that, with the cooperation of the USPTO, two California men pleaded guilty to stealing about $1.66 million from trademark applicants and registrants through companies called Trademark Compliance Center and Trademark Compliance Office. Private lawsuits are also discouraging such mailings.
Q: What’s your advice for anyone who receives a solicitation they think might be suspect?
A: Be skeptical of third-party correspondence received relating to trademarks and intellectual property. Be even more skeptical of third-party invoices, even if they look official and legitimate. While rare, it’s possible to receive communications directly from the USPTO. For example, a petition to cancel is mailed directly to the trademark registrant. Also, the World Intellectual Property Organization and some foreign countries may mail communications and registrations directly to the applicant/registrant. If there’s ever a question about whether a particular communication is a solicitation or official, or whether a particular vendor is legitimate, contact your intellectual property legal counsel.