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
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
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.
Call: 1-651-500-7590 or email: firstname.lastname@example.org. This site is for informational
purposes only and is provided without warranties, express or implied, regarding the
information's accuracy, timeliness, or completeness and does not constitute legal
advice. No attorney/client relationship exists without a written contract between
Not Just Patents LLC and its client. Past performance is no guarantee of future results.
Call 1-651-500-7590 or email email@example.com or ContactTrademark.com for
Responses to Office Actions; File or Defend an Opposition or Cancellation; Patent
or Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.
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