January 31, 2022 | Legal Update
Once a trademark registration has been issued, trademark owners should be on the lookout for the inevitable “Renew Your Trademark” scam letters. Here, to assist trademark owners avoid these scams, we provide a breakdown of an actual scam letter that the trademark attorneys at our law firm recently received for our registered tagline – FIERCELY LOYAL®.
However, before we get to the scam letter, some background information on our tagline and trademark renewals might be helpful. The FIERCELY LOYAL® tagline and our mascot, “Jac,” the fiercely loyal black lab, were adopted by Chambliss after a client survey revealed that they believed that one of the best traits of the firm and its attorneys was our fierce loyalty. (As a side note, we have successfully represented thousands of clients for years, and even decades for many, so we feel that the tagline fits.)
And as shown below, like any responsible trademark owner, we decided to federally register the FIERCELY LOYAL tagline. The firm registered the tagline on January 28, 2014, as U.S. Registration No. 4,476,244. You may or may not know that registered trademarks have a 10-year term and must be renewed before the end of that term. The good news is that they can be renewed indefinitely, so long as the mark is still in use. So, the January 28, 2014, registration date mentioned above is important because it determines the next time our registration must be renewed — namely, January 28, 2024. So, keep that date in mind because it will be important shortly.
When we renew this registration, we submit a “Section 8 and 9[1],” which is a combined document filed with the U.S. Patent and Trademark Office. This document includes (1) our statement that we are still using the FIERCELY LOYAL tagline and (2) our application for the registration to be renewed for another 10-year term. When this combined document is submitted, a filing fee must be paid. Currently, that fee is $525 for each class of goods or services covered by the registration. Our FIERCELY LOYAL registration covers only a single class (i.e., Class 45 for “legal services”), so our total fee to renew this registration will be $525.
Now, on to the scam letter.
Below is a copy of a “reminder” letter we recently received from the “Patent & Trademark Bureau.” Pausing here, note the official-sounding name, “Patent & Trademark Bureau.” The scammer purposefully selected this name to trick trademark owners into thinking that this is a letter from the U.S. Trademark Office. Spoiler alert — it’s not. The official name — which appears on all official correspondence — is the “United States Patent and Trademark Office,” which is often abbreviated to “USPTO.”
Next, the letter states:
However, as discussed above, our mark was registered on January 28, 2014, which means the renewal date is not until January 28, 2024 (as indicated by our markup). The letter also includes an incorrect filing date of April 4, 2012. This fake filing date was necessary because the fake registration date (January 28, 2013) occurred before the actual filing date (April 4, 2013). In other words, without this fake filing date, it would have appeared as if our mark was registered before it was even filed.
Scammers send these types of “reminder” letters early, so if the trademark owner used a law firm for their trademark filings, the scam letter is received before the law firm’s authentic reminder letter is received. Next, these scam letters often include fake renewal dates to then rush trademark owners into responding and paying for a renewal that isn’t required yet. Again, they are hoping trademark owners do not speak with their trademark attorney first.
Next, note the renewal fee of $1,650 for one class of goods or services, plus an additional $850 for each additional class. Recall that the filing fee for Section 8 and 9 is only $525 per class. And while we bill our clients to submit a Section 8 and 9 on their behalf, the amount billed is much less than the amounts in this letter. By the way, we have seen other scam letters that quote fees of as high as $4,000 per class.
These scammers aren’t all bad. But, at least they included a disclaimer in the last few lines of microprint, which indicates that they are not, associated with the U.S. government and that this renewal is only optional.
[1] A brief aside – Before filing a combined Section 8 and 9 at the 10-year mark, a Section 8 declaration must also be filed between the 5th and 6th year following the registration of a mark. In other words, halfway through a trademark registration’s first 10-year term, a declaration of continued use (Section 8) must be submitted in order for the mark to remain registered for the entire 10-year term. From then on, only 10-year renewals are required.
