Monday, January 30, 2012

Trademark Renewal Scams

Dear Rich: I have a trademark registered at the USPTO. I got a letter from a trademark renewal service in Washington, D.C. warning that my trademark has to be renewed right away. But according to your books, my trademark doesn't need to be renewed for another 9 months. Who's right? You know those people who are busy protecting your inheritance in Nigeria? Apparently they are also watching out for your trademark. We believe your letter is one of many trademark renewal scams. Typically, it starts with a pseudo-official letter from some company that sounds like it's affiliated with the government (scroll down for a list of possible offenders). They've mined your information from the USPTO database and the reason you're hearing from them so far in advance of the actual renewal date is that they want to pre-empt any mail you might get from a legitimate source such as your attorney.
Other scams. There are other trademark scams. For example, the Dear Rich staff got a letter a couple of weeks ago from this company offering to "publish" our registered trademark data on the Internet in return for $589 payment. Wait ... for the price of a Droid Bionic, the TMP crew will duplicate what the USPTO and Trademarkia already do for free. (Our favorite part of the letter --  a pathetic and ineffective attempt to avoid U.S. jurisdiction -- said, "It shall be pointed out that TM Publisher Corp. has its headquarters in Switzerland and the postal address in the USA serves the customers to handle payments ... ") BTW, one law firm has recently gone after an alleged TM scammer.
Two post-registration dates you need to know. Just so you know, if you miss two keys dates, your federal registration will be canceled.
  • Continued Use. Sometime during the fifth year after federal registration -- that is sometime between the fifth and sixth anniversary of federal registration -- you must file a "Declaration Of Continued Use Or Excusable Nonuse Under Section 8." The requirements are here. So if your mark was registered on July 1, 2007, sometime between July 1, 2012 and July 1, 2013, you must file the Section 8 declaration.
  • Renewal. File within six months prior to end of the tenth year of registration. 
If you miss either of the deadlines, there is a six-month grace period to correct the error, provided you pay additional fees.