Despite the global COVID-19 pandemic, some entities continue to seek to profit by sending misleading fee-requesting trademark maintenance and renewal solicitations to unsuspecting entrepreneurs, businesses, and consumers. Recently, we had at least two clients receive misleading trademark solicitations. Fortunately, they exercised sound business judgment and conferred with legal counsel before unsuspectingly paying the unwarranted fees, and we advised them that the solicitations were a sham.
The misleading trademark solicitations usually resemble invoices and are issued by private companies with names sounding like official government agencies, such as “Patent and Trademark Office” and “Patent&Trademark Bureau.” The solicitations typically offer services or purport to provide notice of upcoming filing deadlines, usually requiring a fee. They also usually seek to convince the recipient businesses, entrepreneurs, and consumers that they need to pay the fee requested in order to maintain their trademark registrations. The trademarks referred to in the solicitations are the actual trademarks owned by the recipient, and are accompanied by the official United States trademark name and registration number. The names, addresses, and trademark registration information are all publicly-available and accessible in the database maintained by the United States Patent and Trademark Office (“PTO”).
In order to maintain a trademark once it has been registered by the PTO, between the 5th and 6th year after the registration date, owners of registered trademarks must file with the PTO a Declaration of Use and/or Excusable Nonuse under Section 8 of the Trademark Act, which can be combined with a Declaration of Incontestability under Section 15 of the Trademark Act. Thereafter, between the 9th and 10th year after the date of registration, and during the period between every subsequent 9th and 10th year, trademark owners must file a Declaration of Use and/or Excusable Nonuse and Application for Renewal under Sections 8 and 9 of the Trademark Act. A Declaration of Use and/or Excusable Nonuse is a signed statement that: i) the trademark is in use in commerce with the goods and services listed in the registration or ii) the trademark is not in use in commerce due to special circumstances that excuse nonuse. A Declaration of Incontestability is a signed statement that the trademark owner claims incontestable rights in the trademark and continuous use of the trademark for five (5) years.
Certain private companies try to take advantage of the trademark filing requirements by searching the PTO database and sending solicitations to trademark owners seeking a fee to file the required trademark maintenance and renewal documents. The solicitations generally contain fine print where the soliciting companies state that they are private companies not affiliated with the PTO or any government agency. The solicitations often ask the recipient to sign the solicitation and pay a fee before any action will be taken by the soliciting company. Notably, the solicitations usually do not specify what services are being provided, do not indicate whether a Declaration of Use under Section 8 will be filed alone or combined with a Declaration of Incontestability under Section 15 of the Trademark Act, do not specify what type of information the trademark owner needs to provide in order for the maintenance and renewal trademark documents to be filed, and do not indicate whether legal counsel will be either reviewing and/or submitting the applicable trademark filings with the PTO.
In addition, the solicitations often contain inaccurate information. One of the common practices is for the solicitation to misrepresent the trademark registration date which dictates the filing time periods. For example, if a trademark was registered by the PTO on March 1, 2016, the first filing period would be between the 5th and 6th year after the registration. In this example, that would mean a Declaration of Use and/or Excusable Nonuse under Section 8 of the Trademark Act (either alone or combined with a Declaration of Incontestability under Section 15 of the Trademark Act) would need to be filed with the PTO between March 1, 2021 and March 2, 2022. However, the solicitations typically change the registration date to make it one-year earlier (which would be March 1, 2015 in the example). That means that the soliciting companies are seeking a fee to file trademark maintenance and renewal documents one-year earlier than required by the PTO.
The PTO recognizes the pervasiveness of the misleading solicitations and has posted a notice on its website titled, “Caution: misleading notices”. In its notice, the PTO informs trademark owners not to be fooled by potentially misleading offers and notices from private companies and not to pay fees to private companies mistakenly thinking they are required fees charged by the PTO. In fact, the PTO warns that, “We do not endorse any of the private companies and you are not required to use them.” In addition, the PTO warning notice provides that official correspondence will be addressed from “United States Patent and Trademark Office” in Alexandria, Virginia and emails will be from the domain “@uspto.gov”. The PTO further warns that trademark owners should not be fooled by company names that sound like government agencies or offers that contain government data.
The PTO maintains a list of private companies who send trademark solicitations about which the PTO has received complaints. Some of those private companies include the following:
- “Patent and Trademark Office” with addresses in Washington, D.C. and New York;
- “Patent&Trademark Bureau” with addresses in Philadelphia and New York;
- “Patent & Trademark Agency” with an address in New York
- “Trademark Renewal Service” with addresses in Washington, D.C. and New York; and
- “Trademark Safeguard – Trademark Monitoring Service” with an address in New York.
For a full list of soliciting companies for which the PTO has received complaints, you can go to the PTO website address cited above.
The PTO is not an enforcement agency and does not have legal authority to stop private companies from sending trademark related offers and notices. If you are a trademark owner and receive a solicitation informing you of upcoming trademark filing deadlines and/or offering services for a fee, or if you have any questions regarding trademark registration or trademark maintenance and renewal deadlines, feel free to contact the Chair of our Trademark Practice Group, Scott Fisher, at (516) 393-8248 or firstname.lastname@example.org.