Enforcement-Trademarks

The USPTO does not enforce a trademark owner’s legal rights to a trademark 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 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 mark that is infringing is a registered or registering trademark, it may be a good business move to oppose or cancel the trademark. See How to Respond to Cease and Desist Letters if someone is trying to enforcement trademark rights against you.

An owner of a trademark registration may be able to stop infringers and abusers from using the registered mark on online media sites like Google, Yahoo, Bing, etc. if the owner takes the right steps. Likewise, an owner of a trademark registration may be able to stop infringers and abusers from using the registered mark on social networking sites if the owner takes the right steps. (Call us, we can help!)

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 a §8 Affidavit for Continued Use or Excusable Nonuse (between 5-6 years) and Renewal  (before 10 year term is over). (See TMEP 1604 on filing §8 Affidavit.) Example: For a registration issued on Nov. 1, 2011, a six-year affidavit may be filed as early as Nov. 1, 2016, and may be filed as late as Nov. 1, 2017, before entering the six-month grace period.

Note: The only notice that the USPTO provides is with the Certificate of Registration at the time of registration. The owner must file the affidavit or declaration within the time periods required by §8 of the Act regardless of whether the owner receives the notice. 37 C.F.R. §2.162. The USPTO does not provide any further reminder of the due date(s) of the affidavits.



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.



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Should I Get A Trademark or Patent?

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35 U.S.C. 101 Inventions patentable.

Verify a Trademark  Be First To File   How to Trademark Search

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.

Trademark Statistics    UDRP Elements    Loss of Trademark Rights

How To Answer A Trademark Cease and Desist Letter

35 U.S.C. 282 Presumption of validity; defenses

Trademark Refusals    Does not Function as a Mark Refusals

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

Acceptable Specimen       Supplemental Register  $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Filing Requirements for Patent Applications

Trademark Attorney for Overcoming Office Actions

Functional Trademarks   How to Trademark     Surname Refusal

List of U.S. Patent Classifications

Grounds for Opposition & Cancellation     Cease and Desist Letter

How Do U.S. Patent Classifications Work?

Valid/Invalid Use of Trademarks     Trademark Searching

Patent Statistics     Sample Patent, Trademark & Copyright Inventory Forms

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion  DuPont Factors

Proximate Function

Color as Trade Dress  3D Marks as Trade Dress

Invention Information-  What is the Invention?

Ornamental Refusal  Standard TTAB Protective Order

Patent Field of Search

Descriptive Trademarks Trademark2e.com  Likelihood of Confusion 2d

Patent search-New invention

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Patent Search-Non-Obvious

Register a Trademark-Step by Step   Trademark Fixer

Difference between Provisional and Nonprovisional Patent Application

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

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

Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

What Does ‘Use in Commerce’ Mean?    SCAM Letters

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Typical Brand Name Refusals  What is a Family of Marks?

Patent Drawings

Trademark Steps Trademark Registration Answers TESS  

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TSDR Trademark Status and Document Retrieval

What is a Small or Micro Entity?

Published for Opposition see also Opposition Steps/Cancellation Steps

Counterclaims and Affirmative Defenses

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Changes To Implement the First Inventor To File Provisions of the America Invents Act

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

Patent steps

How to Respond Office Actions  DIY Overcoming Descriptive Refusals

PCT Patent Application information

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

Broad Patents

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Making Amendments in Response to Office Actions

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples Office Action Responses More Examples

Trademark Incontestability  TTAB Manual (TBMP)

Trade Secrets

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

State & Federal Trade Secret Laws

Differences between TEAS and TEAS plus  Zombie Trademark

Chart of Patent vs. Trade Secret

What Does Published for Opposition Mean?

How to Keep A Trade Secret

Acquired Distinctiveness  2(f) or 2(f) in part Extension of Time to Oppose

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