We frequently field calls from clients who have received official looking notices requesting payment for renewing or maintaining their patents and trademarks.  Since information regarding issued patents and registered trademarks is publicly available, patent and trademark registration holders frequently find themselves solicited by those with questionable intentions.

My law firm is a holder of its own registered trademark so we too receive solicitations, most recently from the “Patent & Trademark Office” on Madison Avenue in New York. While the solicitation subtly indicates that the Patent & Trademark Office is a private business, it uses the same abbreviation (“PTO”) commonly used for describing the U.S. Patent & Trademark Office. I don’t know if the Madison Avenue “PTO” employs attorneys, but only a bar-admitted attorney is permitted to represent someone in trademark matters at the U.S. Patent & Trademark Office. The solicitation’s indication that “your trademark or patent [sic] will be renewed as it was originally filed, with the originally filed specimen…” is concerning because changes in the way a mark has been used since its registration may necessitate a new specimen (e.g., product or packaging) and/or deletion of goods/services listed in the registration. Note that an error in maintaining a trademark registration may lead to registration cancellation. No less concerning is the solicitation’s assertion that “[a]ll trademark or patent renewal services are provided ‘as is’ ”. I am not sure what “as is” means with respect to legal services. However, based on my personal experience with other “as is” purchases, I think that “as is” legal services should probably be avoided. Remember that if an entity is represented by an attorney, the U.S. Patent & Trademark Office (the real one in Alexandria, VA) will communicate directly with the attorney, not the entity.

Regarding timing of trademark maintenance, between the 5th and 6th anniversaries of a U.S. trademark registration, a trademark registrant must file a Section 8 declaration of use (or excusable non-use), a specimen showing current use of the mark, and a corresponding fee. For an extra fee the filing may be made within a six-month grace period following the 6th anniversary date. Between the 9th and 10th anniversaries of the registration, and each successive ten-year period thereafter, a Section 8 declaration of use, specimen, and fee must be filed. For an extra fee the filing may be made within a six-month grace period following the 10th anniversary date. Because the time for filing a ten-year Section 8 declaration of use coincides with the time for filing a Section 9 trademark renewal request, a combined §§ 8 & 9 form exists. Failure to file the declaration of use or renewal will result in cancellation of the trademark registration.