Caution: Trademark Renewal Scams

By Josh Gerben, Esq.

Our law firm received an email recently in which the subject line read “Real? Or not real?”; it was a message from a longtime client inquiring about a letter they had received in the mail. The notice claimed that the client’s trademark was up for renewal and requested substantial payment in order to file it. With its header, domain reference, and accurate information regarding the mark in question, the letter looks legitimate at first glance. However, trademark scams have become increasingly common as more and more people take advantage of the information made public through the USPTO’s online trademark register–and this case was no different.

Identifying Trademark Solicitations

Solicitation letters for trademark-related services are becoming more and more commonplace, and trademark owners should be cautioned against using these third-party offerings. To avoid falling victim to one of these fraudulent notices, here are some key points for trademark registration owners to keep in mind:

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• As a general rule, all official trademark correspondence will be sent through the attorney of record on your trademark. The USPTO will use the law firm listed on your trademark as the first point of contact for all official trademark communication. This way, the attorney can reach out to you whenever action is needed for your trademarks and provide peace of mind that no deadlines are being overlooked. Additionally, the attorney of record is available to confirm whether or not any mail you may receive is a scam.
• Fraudulent letters often contain fake websites and mailing addresses. Legitimate correspondence can be identified by an “@uspto.gov” email address or physical mailers exclusively from the United States Patent and Trademark Office in Alexandria, Virginia. Additionally, the only official website of the USPTO is uspto.gov. Letters that contain alternate websites or international addresses should be immediately regarded with suspicion.
• Trademark renewals are due five years after the date of registration, between the ninth and tenth anniversary of the registration, and then every ten years thereafter. Having an existing understanding of the trademark renewal process prior to receiving a scam letter can help you to identify it as fraudulent even quicker. If you are already aware that your trademark is not up for renewal for another two years, it is much easier to dismiss the letter. If you are unaware of trademark renewal deadlines and requirements, click here.
• Not all solicitation notices are about renewals. You could receive a letter at any point during your trademark’s lifetime, regardless of a renewal deadline. It may mention a different filing, such as a statement of use or Office action response, but it is still just as important to regard the notice with skepticism and confirm its legitimacy with an attorney before taking any action.
• Lastly, awareness of trademark scams is crucial. Many trademark owners do not know that they are potential targets for fraud, and heightened knowledge of that possibility can help identify a fake notice before it is mistakenly paid. This understanding and increased vigilance can help save trademark owners thousands of dollars, money much better spent in growing their business or trademark portfolio.

Learn how to renew a U.S. trademark registration here.

Avoiding Trademark Scams

When in doubt, it is always best to turn to a trademark attorney for clarification when questioning correspondence about your renewals (Learn about our Trademark Renewal Services). They are best equipped to research the letter you have received and provide accurate deadline information about any upcoming filings you may have. If you have received a solicitation notice regarding your trademark, please reach out to any of the attorneys at Gerben IP for a consultation.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.