Watch Out for This Trademark Renewal Scam
Could you spot this trademark scam? A business owner received a letter from the "Patent&Trademark Bureau" in Philadelphia charging $925 to renew one of the business's trademarks. The letter looked real. It had the correct information for the business and for the trademark. It even had a graphic representation of the trademark and the serial number of the mark. And, to top off the realism, it had an official-looking barcode on the letter. But it was a scam, an illegal plan for getting money from people, often involving tricking them.
Reading the Fine Print
In the fine print at the bottom of the web page, the company does represent itself honestly, as required by law. This company admits that it is "a private business that is not endorsed by the U.S. government." Many people don't read the fine print, or they think they must comply by sending the letter back and paying $925.
How You Know a Letter is a Scam
1. Wrong Agency. The U.S. government agency that registers patents and trademarks is the U.S. Patent and Trademark Office (not Bureau). It's in Washington, D.C., not Philadelphia (but Philadelphia has a nice patriotic sound, don't you think?).
2. Mistakes. The address is 1500 Market st, 12th Floor (yes, the "st" should be capitalized). In the "Important Information" section there is a poor sentence: "trademarks may be lost if they are failed to be renewed...." Typos, grammar, and spelling errors are common in this type of scam.
3. Wrong Link. If you enter the name "Patent&Trademark Bureau" into your search engine, you'll come to the website of a company with a .com. Federal government agencies have a .gov extension. So you know it's not part of the federal government.
4. They Are Billing You Directly. Fees required to maintain U.S. patents and trademark registrations must be paid directly to the USPTO.
5. Wrong Address. Any official correspondence sent to you by the USPTO will be from the United States Patent and Trademark Office in Alexandria, VA, and if by e-mail, specifically from the domain @uspto.gov.
Some other trademark scams involve legal services, help with filings, and recording trademarks in a private registry. Others may try to scare you with deadlines.
Be wary if you receive any of these types of letters:
- Offers of legal services or trademark monitoring services
- Offers to record trademarks with U.S. Customers and Border Protection
- Private registries for trademarks
A Key Step in Registering a Trademark
The scammer also missed a key element in the trademark registration process. When you register a trademark, you must file a separate registration for each type of goods or services you will be using it on; this is called a "class" of services. For example, if you want to put the trademark on mugs and on the internet, these are two classes of service. You must pay a separate registration fee for each class.
The USPTO has a master list of trademark classes you can search to get all the classes you will need.
How to Keep Your Trademark Alive
The scammer in the above example did get one thing right. In order to maintain your trademark, you must re-register it every five to six years. To maintain your trademark, you must file a Section 8 Declaration, or Declaration of Use, swearing (in writing) that the trademark is in common use commerce.
You must file the Section 8 between the 5th and 6th years after the registration date. Then the registration will continue until the 10-year mark. You must submit another Declaration of Use between the 9th and 10th year after the registration date, and keep submitting every 10 years.
The filing fee for this declaration is $125 for each class of goods or services in which the trademark is registered.
Specific information must be included in the declaration, and only someone who is properly authorized to sign on behalf of the company may sign the declaration.
File a Complaint
The USPTO doesn't investigate complaints or participate in legal complaints against these scammers. If you receive one of these solicitation letters and you want to file an online consumer complaint, contact the Federal Trade Commission (FTC) at www.ftc.gov.
United States Patent and Trademark Office. "Caution: misleading notices." Accessed July 8, 2020.
Erik M. Pelton & Associates. "Beware of Misleading Offer From 'Patent & Trademark Bureau.'" Accessed July 8, 2020.
Federal Trade Commission. "Is the USPTO Really Contacting Your Company? Maybe Not." Accessed June 22, 2020.
U.S. Patent and Trademark Office. "Trademark Process: Step 2." Accessed June 22, 2020.
United States Patent and Trademark Office. "Keeping your registration alive." Accessed July 8, 2020.
U.S. Patent & Trademark Office. "Overview of Trademark Fees." Accessed June 22, 2020.