Trademark Maintenance and Renewal Services: Beware the Unsolicited Offer/Invoice

October 19, 2010, 2:39 PM

Every applicant or registrant of a trademark with the United States Patent and Trademark Office (PTO) needs to be aware that there are a number of companies in the business of soliciting payment for services relating to maintenance and renewal of trademark registrations that may confuse the recipient into thinking they are being contacted by the PTO or an affiliated agency. For example: click here to view USTMS form sent to Kaufman & Canoles. Neither the PTO nor any other federal agency offers these kinds of services, and the PTO has issued a warning about them. These types of solicitations can be safely ignored, and they should be.

Similar solicitations seeming to offer international registration or protection of trademarks registered with the PTO are also on the increase. The World Intellectual Property Organization (WIPO) has issued a warning about these, with a helpful list of their sources. And with the increasing importance of Internet domain names, we are now also seeing similar solicitations for listings, renewals and other services for Internet domain names owned by our clients.

These solicitations are made possible by real-time public availability of information about registration or ownership of trademarks and domain names. They are designed to make you think you need to respond to them, and in most cases are designed to have the look and feel of an invoice, in the hope that the recipient will feel compelled to respond by paying the amount requested. Any temptation to do so should be resisted and overcome. The paper used for these solicitations can be recycled, but that is the full extent of their value. --Robert E. Smartschan