Trademark Renewal

We received from a client a copy of a mailing that was carefully designed to make recipients think that it was from the government trademark agency. According to the letter, all you have to do is send in $175 for renewal of the trademark registration. But it appears to us that all they do with the $175 is fill in the basic information on the form and send it back to you to finish the filing. It does not include the filing fee, so, after depositing your check, they would send the form back to you with instructions to add your specimen and the filing fee and then file it with the U. S. Patent and Trademark Office.

The legal work of renewing the trademark was not going to be performed. There is no indication of specimen analysis. If specimen analysis is not conducted, the filing could be a wasted effort if the specimen doesn’t match the original filing or if altered use is not disclosed on application. Also, the solicitation doesn’t inform about Section 15 filings, nor offer to do them. When renewal applications are due, both a Section 8 and a Section 15 affidavit should be filed, if applicable. The Section 15 affidavit is a special filing for incontestability, a trademark doctrine that provides more protection. A specimen of current use should be analyzed it to make sure it matches the existing mark, and that the particular uses for that mark match what was disclosed on the initial trademark application.

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