Trademark Monitoring

The submission of a Declaration of Continued Use is typically required to renew trademarks once they have been duly registered. Between the fifth and sixth anniversary of the filing, the first Declaration of Continued Use is often due. The ninth or tenth year marks the typical interval between renewals. Renewals are typically conducted every ten years after that. Us Trademark Service reminds users of important dates and facilitates the submission of required documents through its user-friendly site, all with a few clicks or small updates.
We can also assist with filing a "Declaration of Incontestability," which grants further protection under trademark law, after five years, provided the mark is still in use. This could make it harder for people to challenge the trademark on reasons like (1) the mark isn't unique enough; (2) it looks too much like another mark that someone else started using first; or (3) it serves no purpose other than to indicate who made the goods or provided the service.

It is common practice for trademark owners to demand that others stop using their mark by sending a "cease and desist" letter. Even if the infringement is accidental, the party responsible should cease their actions immediately upon being informed that they are clearly infringing upon someone else's rights.

The party accused of infringement may choose to disregard the request or deny any wrongdoing. A trademark infringement lawsuit could be considered after that. If you think suing could be the best course of action, you should consult a lawyer.

It is feasible to make adjustments to an application; however, the procedure and any expenses related to the changes are typically time-dependent. You can seek a change to your trademark using your Us Trademark Service account before it is published in the Official Gazette. There may be additional costs associated with filing with the USPTO and Us Trademark Service.

If you need to make changes to your trademark after it has been published in the Official Gazette, Us Trademark Service can help you with a Post-Publication Amendment.

A new application may be required instead if the adjustment is substantial. For instance, if you want to add international categories or expand the scope of a description, you might have to pay more and submit a new application. In contrast, clerical mistakes are usually simple to correct and usually won't force the applicant to start the application process all over again.

It is possible to sell, license, or assign a trademark, just like any other asset of a firm. It is helpful to register assignments with the USPTO and someone normally has to keep using the mark in commerce because validity criteria generally still apply. We can assist you with transferring the trademark with the PTO if you get into such an agreement. Even before a company is formally established, individuals may choose to register the mark. The next step is to transfer the mark into the corporation once it is constituted.

The United States Patent and Trademark Office defines trademark infringement as the unlicensed use of a trademark or service mark on or in relation to products and/or services in a way that would lead consumers to believe that the goods or services are not from the legitimate source.

Trademark dilution is a second infringement theory alternative to consumer confusion. According to the USPTO, “a trademark owner may claim trademark ‘dilution,’ asserting that it owns a famous mark and the use of your mark diminishes the strength or value of the trademark owner's mark by ‘blurring’ the mark's distinctiveness or ‘tarnishing’ the mark's image by connecting it to something distasteful or objectionable-even if there is no likelihood of confusion.”

A Cease and Desist Letter is sent to an alleged infringer to put them on notice of the alleged infringement and gives them a deadline to stop infringing. In many cases, an alleged infringer will voluntarily comply with the cease and desist letter and the parties often move on without any further action. If the cease and desist letter is ignored, it can be used in a lawsuit to show the alleged infringer was on notice of the infringement and yet continued in bad faith to willfully infringe. This may result in additional damages in a lawsuit.

A cease and desist order is not the same as a cease and desist order signed by a judge with the force of law. To get an order, a lawsuit has to be filed and the order must be obtained by a court.

To support a trademark infringement claim in court, a plaintiff must prove that it owns a valid mark, that it has priority (its rights in the mark(s) are "senior" to the alleged infringer. That means if someone was using a mark before the person who registered it with the USPTO, they may be able to keep using it in the same manner they were before the USPTO issued registration. This senior use may, however, may be limited to the use in its geographic area or without the ability to broaden the use of the mark to additional goods or services.

When a plaintiff owns a federal trademark registration on the Principal Register, there is a legal presumption of the validity and ownership of the mark as well as of the exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration. These presumptions may be rebutted in court proceedings.

The point is that just because someone else is using a similar mark, if they were using before the owner of USPTO registration, they may not be infringing.

If the trademark owner is able to prove infringement, available remedies may include the following:

• a court order (injunction) that the defendant stop using the accused mark;
• an order requiring the destruction or forfeiture of infringing articles;
• monetary relief, including the defendant's profits, any damages sustained by the plaintiff, and the costs of the action; and
• Conversely, a court may find instead that (1) you are not infringing the trademark, (2) a defense bars the plaintiff's claim(s), or (3) other reasons exist why the trademark owner is not entitled to prevail. The risk to filing a suit is that sometimes courts will invalidate a trademark registration by ruling it is too generic and not worthy of protection notwithstanding the USPTO may have granted a registration.

To learn more about an efficient way to remove infringing material online, read more about our DMCA Takedown services.