In the email age, most everyone has grown accustomed to scams and misleading service solicitations that arrive by email. A common tactic is to dress the email communication up to look like it is coming from a legitimate company or entity that the recipient is familiar with, thus lulling the recipient with a false sense of security. IT professionals constantly remind us to beware of such emails and urge us to look for the signs that something about the communication is a little bit off before opening it or any attachments. Recently, perhaps in an effort to catch the owners of U.S. trademark registrations off guard, at least one service provider has resorted to using regular mail in an
effort to deviously gain business. Organizations with U.S. trademark registrations should be on the lookout for these mailings and take extra precautions before responding to any solicitations.
What should you be looking for?
The “Renewal Department” of an entity fraudulently holding itself out as the “Patent and Trademark Office” has been mailing out hard copy reminders to the owners of U.S. trademark registrations instructing them to take maintenance action. Owners of U.S. trademark registrations must take action periodically to keep those registrations alive, including
paying fees to the United States Patent and Trademark Office (“USPTO”). The hard copy letter purports to come from an official-sounding address on Pennsylvania Avenue in Washington, D.C. The registration number of a given trademark registration is included and the notice somewhat ominously characterizes the registration as “pending cancellation" in just a few months. The letter claims all will be well if the registration owner simply signs the solicitation and sends it back, thereby agreeing to authorize the “Patent & Trademark Office” to take the required maintenance action.
While buried in the fine print of these bogus reminders is a disclosure that the “Patent and
Trademark Office” is actually a private service provider, everything else about the letter is dressed up to make it look and sound like it is coming from the USPTO. Most dangerously, the reminders appear to routinely get the date by which cancellation will occur wrong – advancing the date by which maintenance action must be taken by an entire year, perhaps in the hope that the registration owner’s regular legal counsel will have not yet approached the owner to request maintenance instructions. It's important to note that maintenance action taken before the opening of the time period in which action must be taken is ineffective and you may not be entitled to a refund of the fees paid prematurely to the USPTO.
What are the signs that something is amiss here?
- Official correspondence from the USPTO always identifies the sender as the U.S. Patent and Trademark Office
- The USPTO’s offices are in Virginia, not in Washington, D.C.
- While the USPTO does send out courtesy reminders that maintenance action is due for trademark registrations, those notices go out by email, not regular mail. Also, those notices are directed to the correspondent of record, which is often the lawyer that helped the registration owner obtain the registration, not the owner of the registration
- Most importantly, the USPTO does not ever offer to take maintenance action on behalf of registration owners
If you receive one of these reminder notices, we urge you check with your attorney who can very quickly advise you as to when maintenance action must be taken, thus ensuring you do not act prematurely and perhaps ineffectively.