If you own a registered trademark for a few years, you will receive notices in the mail warning you of a “Pending Trademark Cancellation” or an “Imminent Trademark Expiration.” Be careful when reading these because they may not be legitimate. While trademark maintenance is a necessary part of trademark ownership, some companies send maintenance notices that appear to be borderline fraudulent if not outright scams.
Below, I explain several reasons to be cautious about reading or responding to these notices regarding trademark cancellations. I’ll use as an example a notice that I got on my own trademark registration for GALVANI LEGAL, so you can see all the clues that you should investigate. You can also read the official guidance from the US Trademark Office if you want it straight from the horse’s mouth.
Urgent Mailer Envelope
A few weeks ago, I received this envelope in the mail:
The return address says PATENT & TRADEMARK OFFICE. This is pretty typical. Businesses like this often use names that sound like “United States Patent and Trademark Office” but aren’t quite the United States Patent and Trademark Office. I’ve seen “United States Patent and Trademark Organization,” “United States Patent and Trademark Bureau,” and “United States Trademark Registration Office.” None were the real thing.
Obviously, these companies are trying to grab your attention and make you think you are receiving something official from the government, perhaps to at least get you to open the envelope. But, as of this writing, the US Patent and Trademark Office doesn’t actually mail you anything to remind you that you have maintenance work due in your trademark registration. Inconsistently, the Trademark Office will send us a reminder, but when it does, it is always by email, never mail.
Also, you can see that the return address is in Washington state. The US Patent and Trademark Office is not in Washington state. It isn’t even in Washington, D.C. The official address for the USPTO is in Alexandria, Virginia, which is just outside of DC.
Sometimes these solicitations come from DC or from Alexandria, but I used to see a lot from Czech Republic and Slovakia, especially Bratislava. Pretty clear signs that they were not official US government correspondence.
Lastly, if you used a trademark attorney to file and register your trademark, then your trademark attorney may still be the official correspondence address. If so, the Trademark Office will never send you anything. The Office will only communicate with the correspondence address on file, so if the USPTO sends anything, it will go there rather than to you.
“IMPORTANT – OPEN IMMEDIATELY”
I receive official mail from the US Patent and Trademark Office. I don’t think any of it says “Open Immediately,” and I don’t think any of it uses color. Again, these notices are trying to create a sense of urgency to get you to act before reading too closely.
The Trademark Solicitation Letter
Let’s say you’re intrigued and want to check out the letter. You open the envelope and see:
Bang! Bright red right at the top! Holy Cow! My trademark registration is about to be cancelled?! What do I do?!
All of the information at the top is designed to make you freak out. Then, you might just jump down to the bottom, sign your name, write a check, and send the mailer back. Don’t!
Just below the freak-out notice is some information about your trademark, like its literal element, its registration number, and its registration date. In the photograph, the registration date is August 25, 2020, which is actually the correct registration date for my trademark.
These notices often display the wrong registration date. The one here doesn’t, but I have seen many that display a date that is one year earlier than it actually is, or a date is just completely unrelated to the actual trademark registration date.
The trademark registration date is important because it determines the timing of the maintenance work. Everything is keyed to this date. Maintenance windows open on the anniversaries of the registration date. They also close on anniversaries.
The first maintenance window opens on the 5th anniversary and closes on the 6th anniversary. The second maintenance window opens on the 9th anniversary and closes on the 10th. They repeat every ten years after that.
For example, my trademark registration for GALVANI LEGAL is not due for maintenance until August 25, 2025, at the earliest. I then have until August 25, 2026, to file. And, I actually can take 6 more months if I pay a penalty. But don’t do that – filing early in the maintenance window is a good idea because the Office takes so long now to process maintenance paperwork.
But also don’t file too early. My window opens on August 25, 2025, and yet I received this notice in November 2023, almost two years early. The company that sent me this notice cannot do anything for me for almost two more years. So why do they want my money now? The Trademark Office will probably have changed its fees by the time my deadline arrives!
A Questionable Trademark Renewal Offer
Even reading the fine print on the letter doesn’t clearly explain what it is. If you sign the letter, it sounds like you are ordering them to file the maintenance work on your behalf. Are they lawyers? Are they a law firm? Trademark maintenance work is not just paying a fee – there is actually real legal work and investigation that goes into it.
It is unclear whether companies like this are appearing as your attorney, even though they are offering attorney services (and on that note, the USPTO warns people that these are services that the companies, “as non-attorneys, are not authorized to provide.”).
There is some qualification. The notice I received does say “Patent & Trademark Office is a private company, not associated with any official government organizations.” So I’ll give them some credit; while they bury it, they do eventually say that they are not the US government. But they also don’t say what they actually are.
Trademark Renewal Costs
These companies are not cheap. Every single one of these notices I can remember quotes a fee that is higher than the fees our office charges.
So, if you do decide to hire a company like this, remember: not only are you probably not hiring an attorney, not only are you maybe paying years in advance, not only are you sending money to a stranger who randomly contacted you through the mail, but you are most likely paying more than if you had driven over to meet, talk with, and hire a local trademark attorney.
Check Your Trademark Maintenance Deadline
While these notices are a plague, they are effective at one thing: reminding you that you do need to file something in your trademark registration to prevent it from being cancelled. Eventually.
I can’t vouch for the accuracy of the deadlines in any solicitation you might receive. The letter I got didn’t state a deadline. Some do, and many of them are wrong. But yours might not be.
Fortunately, there is an easy way to check the deadline for your maintenance fee deadline. Use the Trademark Office website for unbiased information:
- Go to https://tsdr.uspto.gov/. There is a box near the top that lets you type your registration number in. You should have this – in fact, it is probably on the solicitation you received!
- Hit the “Status” button. This will bring up all the information about your trademark registration. Here you can confirm whether any of the information on the notice is accurate.
- There are three tabs just above and to the left of your trademark. Select the “Maintenance” tab. As the image below shows, this view will display three things: the day the next maintenance window opens, the day that maintenance window closes, and the day that the 6-month grace period closes if you pay the penalty fee. Now you know if your trademark is really facing impending cancellation.
The other thing you can probably rely on is that if you got one of these solicitations, it is probably coming to you well before the deadline has arrived. The company wants you to hire them before you hire someone else (perhaps even the trademark attorney you used to file the application). For that reason, the company is probably sending you the notice in advance of the maintenance window opening.
If you have received a trademark solicitation and are unsure whether it is legitimate or not, feel free to contact Phoenix trademark attorney Tom Galvani. I can tell you within a few minutes whether your trademark is about to expire or whether you actually have another year until you can even start to file your paperwork. Our fees are cheaper than those quoted in the above letter. If you have any questions, feel free to contact Tom at 602-281-6481.