Protect Your Trademark

The USPTO does not enforce a trademark owner’s legal rights to a trademark after registration except for stopping new registrations where  the USPTO believes a likelihood of confusion may exist between the new registration and already registered or pending trademarks. It is up to the owner of a mark to monitor other’s use of their mark and protect their own rights through oppositions or cancellations through the USPTO or other civil or criminal proceedings.

An owner has a duty to monitor infringing use of its trademarks and should enforce these rights by using cease and desist letters, licensing agreements, consent agreements, and litigation (depending on the facts) if the infringements do not cease. If the infringer’s use qualifies as counterfeit use of the mark, criminal charges may be brought. If a trademark owner does not police use of the mark and stop infringers, the infringers may be able to have the mark canceled through a cancellation procedure. A trademark loses its strength and can lose enforceability if the owner does not control its exclusive use.

A trademark owner has the right to have the FBI investigate and potentially bring criminal charges against traffickers in counterfeits for marks registered on the Principal Register. See 18 USC 2320 for more information.

The U.S. Customs and Border Protection provide recordation and border protection against counterfeits and pirated goods for U.S. registered trademarks (on the Principal Register) that are enforced through seizure, denial of entry into the U.S., and civil fines. See Register with U.S. Customs for more information.

A trademark owner with a trademark on the Principal Register may also seek protection through exclusion orders from the International Trade Commission barring the products at issue from entry into the United States, as well as a cease and desist order directing the violating parties to cease certain actions under Section 337 of the Tariff Act of 1930 (19 U.S.C. 1337).

“Section 337 specifically declares the infringement of the following statutory rights to be unlawful import practices: a U.S. patent or a U.S. copyright registered under Title 17, [ and] a registered trademark . . . In cases involving infringement of these intellectual property rights, there is no injury requirement.” (Source: U.S. International Trade Commission Answers to Frequency Asked Questions.)


Protection of a Domain Name

Remedies available to a trademark owner who has been infringed

Domain name registrants that have distinctive names or famous names should monitor use of their names by others on the internet and in other commercial use for infringement, counterfeiting or piracy. Remedies and injunctions are available for those who have trademarks on the Principal Register of the USPTO against those who violate U.S. Trademark Law. State remedies may be available to those who have unregistered trademarks or domain names.

Trademark registrants of a mark registered in the USPTO whose rights have been civilly infringed may be entitled to injunctions (stop the use of the infringing name, goods or services), the plaintiff may also be entitled to recover defendant’s profits, any damages sustained by the plaintiff (up to 3 times damages under some circumstances), and the costs of the action. The court in exceptional cases may award reasonable attorney fees to the prevailing party.

Violation of the Anticybersquatting Consumer Protection Act may lead to a court taking action against the domain name registrant with the following consequences: forfeiture, cancellation, or transfer of a domain name to the owner of the mark and other remedies including injunctive relief, recovery of defendant's profits, actual damages, and costs, and statutory damages (in cybersquatting cases), in an amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just.


Report a Fake--If you have been the victim of counterfeiters or modern-day pirates, or if you suspect a company is making or selling counterfeit goods, please contact the U.S. Department of Homeland Security's U.S. Immigration and Customs Office at 1-866-999-HALT.


Maintenance

A trademark owner must maintain a trademark by continuing to use the trademark in commerce and by filing for Continued Use or Excusable Nonuse (between 5-6 years) and Renewal  (before 10 year term is over).

After 5 years of continued use of a trademark on the Principal Register and the filing of a §15 Declaration, a mark becomes incontestable. This showing of incontestability is conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner's ownership of the mark and of the owner's exclusive right to use the mark with the goods/services. The §15 Declaration is not required unless incontestability is desired. The declaration must be executed and filed within one year following a 5-year period of continuous use of the mark in commerce.


If your trademark has been registered on the Supplemental Register for several years and you believe that it has acquired distinctiveness through extended use, advertising, sales or other means, please contact us and we can help you use this information to seek a new registration on the Principal Register.


The USPTO is planning to send out email reminders for trademark maintenance fees due starting in late January 2015. Here’s the text of their notice from http://www.uspto.gov/trademarks/notices/reminder_maintenance_filings.jsp:




USPTO to Issue Courtesy Email Reminders of Registration Maintenance Filing Deadlines

In late January 2015, the United States Patent and Trademark Office (“USPTO”) plans to begin sending courtesy email reminders of upcoming post-registration maintenance filing deadlines for §§8 and 71 declarations and §9 renewals to registration owners who have (1) “live” registrations on the date of sending; (2) provided a valid email address to the USPTO; and (3) authorized email communication.  No reminders will be sent by regular mail, and no follow-up emails will be attempted for undeliverable emails.


To ensure receipt of the courtesy email reminders, registration owners should add the USPTO to their “safe senders list” and/or confirm that their email server will accept email from the USPTO and will not treat it as junk mail or spam.  Any failure by the USPTO to provide the courtesy email reminders or any non-receipt of such reminders will not excuse a registration owner who fails to meet its statutory obligations.


Eligibility and Targeted Recipients


The courtesy email reminders will be sent on the first day of the statutory filing period for the maintenance filing (e.g., 5th year anniversary date, 9th year anniversary date, 19th year anniversary date, etc.) to all email addresses of record within the Correspondence and Current Owner(s) Information fields, as indicated in Office records, even if email was only authorized for one of the fields.  For example, if email was authorized in the Correspondence Information field but not in the Current Owner(s) Information field, the reminders will be sent to email addresses in both the Correspondence and Current Owner(s) Information fields.


The reminders will be sent to both primary and secondary email addresses.  If an email address is duplicated (for example, within the Correspondence and Current Owner(s) Information fields), only one notice will be sent to that email address.  


Registration owners should use the USPTO’s Trademark Electronic Application System (“TEAS”) Change of Correspondence Address and Change of Owner’s Address Forms to verify, update, add, or delete email address information, as necessary, to ensure receipt of the reminders by the registration owner(s) and any legal representative that elect to receive them.  The USPTO encourages owners and/or their attorneys to promptly make any necessary changes to email address(es) in the Trademark Database.


Information Communicated in the Courtesy Reminders


The courtesy email reminders will identify the registered mark, corresponding serial and registration numbers, the date of registration, and the owner(s) of record in the USPTO’s Trademark database.  The reminders will also identify the maintenance filing currently due (e.g., Section 8 declaration, Section 71 declaration, or Section 8 declaration and Section 9 renewal application), along with the anniversary filing deadline, the grace period deadline, and the filing fee per class.


The courtesy email reminders will provide links to the USPTO website for general information on registration maintenance requirements, as well as direct links to TEAS, the Trademark Status & Document Retrieval (“TSDR”) database, and the Electronic Trademark Assignment System (“ETAS”).


Opting Out of Receiving the Courtesy Email Reminders


If registration owners or their attorneys do not wish to receive the courtesy email reminders, they should delete their email addresses from the USPTO’s Trademark Database using the TEAS Change of Correspondence Address and Change of Owner’s Address Forms.


If legal representation prior to registration will not be ongoing, the TEAS Change of Correspondence Address and Change of Owner’s Address Forms should be used to remove any attorney email address(es) from the USPTO’s Trademark database and to provide the email address(es) of the registration owner(s), so that the USPTO can send the courtesy email reminder directly to the registration owner(s).



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For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Filing Requirements for Patent Applications

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill  Abandoned Trademarks

Should I Get A Trademark or Patent?

Patentability Evaluation

Trademark Disclaimers   Trademark Dilution     Oppose or Cancel?

Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File   How to Trademark Search

37 CFR § 1.53 Application number, filing date, and completion of application

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Difference between Provisional and Nonprovisional Patent Application

Opposition Pleadings    UDRP Elements    Loss of Trademark Rights

How To Answer A Trademark Cease and Desist Letter

Shop Rights  What is a Small or Micro Entity?

Trademark Refusals    Does not Function as a Mark Refusals

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Acceptable Specimen       Supplemental Register  $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent Pending see also Patent Marking

Trademark Attorney for Overcoming Office Actions

Functional Trademarks   How to Trademark     Surname Refusal

Patent Drawings

Grounds for Opposition & Cancellation     Cease and Desist Letter


Valid/Invalid Use of Trademarks     Trademark Searching

How to Respond to Office Actions

What is a Compact Patent Prosecution?


Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion  DuPont Factors

Patent search-New invention

Color as Trade Dress  3D Marks as Trade Dress

Patent Search-Non-Obvious

Ornamental Refusal  Standard TTAB Protective Order

How to Keep A Trade Secret

Descriptive Trademarks Trademark2e.com  Likelihood of Confusion 2d

State & Federal Trade Secret Laws

Merely Descriptive Trademarks   Merely Descriptive Refusals

Chart of Patent vs. Trade Secret

Register a Trademark-Step by Step   Trademark Fixer

ID of Goods and Services see also Headings (list) of International Trademark Classes

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Geographically Descriptive or Deceptive

Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

What Does ‘Use in Commerce’ Mean?    SCAM Letters

Section 2(d) Refusals   ApplyToTrademark.com

Trademark Incontestability  TTAB Manual (TBMP)

Typical Brand Name Refusals  What is a Family of Marks?

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

TSDR Trademark Status and Document Retrieval

What are Dead or Abandoned Trademarks? Can I Use An Abandoned Trademark?  Can I Abandon a Trademark During An Opposition?

Published for Opposition see also Opposition Steps/Cancellation Steps

Counterclaims and Affirmative Defenses

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process

Zombie Trademark  

What Does Published for Opposition Mean?

What is the Difference between Principal & Supplemental Register? What If Someone Files An Opposition Against My Trademark?

Acquired Distinctiveness  2(f) or 2(f) in part

How to Respond Office Actions  DIY Overcoming Descriptive Refusals

Extension of Time to Oppose

Trademark Clearance Search   DIY Trademark Strategies


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