Enforcement-
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-
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-
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-
®®®®®®® From Not Just Patents® Legal Services: See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.
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