Business Owners Beware

If you have a registered trademark or service mark with the United States Patent and Trademark Office, then it is very likely that you have received or will receive an official-looking document with the bold caption "Trademark or Service Mark Cancellation Alert." The document, which contains official-looking numbers, goes on to threaten that the recipient's trademark or service mark will be cancelled unless that party complies with the requirements set forth in the document.

While the form appears to be from the U. S. government, it is, in fact, noted in small print toward the end of the text that it is actually a solicitation from a private company that wishes to have the recipient hire it for the purpose of renewing the identified trademark registration or filing the appropriate affidavit in a timely fashion. It is likely that this company searches the Patent and Trademark Office's trademark database in order to determine when affidavits of continued use or renewals are due, and the threatening alert is mailed to the trademark owners. The amount of money requested for the promised service is substantial and far in excess of the amount a client would have to pay for comparable work by a skilled trademark attorney.

The U.S. Patent and Trademark Office does not send formal notice of the date when an affidavit of continued use of a trademark or service mark is to be filed. Similarly, that office does not notify owners that trademark or service mark renewals must be made. It is incumbent upon each owner of a U.S.-registered mark to calendar the appropriate dates to file the necessary documents in a timely fashion, though responsible trademark lawyers will customarily docket the appropriate dates and will advise their clients of the necessity of complying with required filings. The consequences of failing to make a timely filing or omitting to file a document required by U.S. federal statute is that the registration will be cancelled, though the owner will still have trademark rights under the common law.

It is, in fact, possible to reregister a mark with the Trademark Office once it has been cancelled for failure to file the appropriate affidavit of use or renewal. Unfortunately, the cost of reregistering is higher than the cost of filing the renewal forms, and some of the benefits of registration may be either delayed or lost.

Affidavit Of Continued Use

When a trademark or service mark is registered with the U.S. Trademark Office, after the...