Trademark owners, take note. If you file an application for federal trademark registration, you should keep an eye out for misleading mailings from unscrupulous vendors trying to sell you (or trick you into paying for) things you don’t need.
This is one reason the U.S. Patent and Trademark Office warns as follows:
“By filing this application, you acknowledge that YOU HAVE NO RIGHT TO CONFIDENTIALITY in the information disclosed. The public will be able to view this information in the USPTO’s on-line databases and through internet search engines and other on-line databases.”
Heed this warning. Fraudsters troll the PTO’s public database and send applicants phony invoices and other official-looking mailings. Their names frequently mimic the PTO’s, and include words like “United States,” “U.S.,” “Trademark,” “Registration,” “Office,” and “Agency.” Ignore them. They are fraudulent. The senders count on a handful of trusting or careless recipients out of thousands to pay their “invoice.” Don’t be one of them.
All official mailings will come from the PTO in Alexandria, Virginia. Or, if your lawyer filed the application, official word will come solely from him or her. All official PTO emails will have .uspto.gov in the sender’s address.
There’s no way to get around providing your contact information when filing for federal trademark registration. That shouldn’t dissuade you from making a filing; just be smart when doing so. Thoroughly ignoring any unsolicited invoices you receive is the best way to take the profit motive out of these scams. You also can report them to the PTO at TMFeedback@uspto.gov.
Time flies when you’re having fun!
September 1 marks five years that Atkins IP has been serving clients with trademark and copyright needs. We couldn’t have done it without you!
In that time, we’ve been in federal court, before the Trademark Trial and Appeal Board, and prepared many an application for registration of our clients’ trademarks with the U.S. Patent and Trademark Office. It’s been awesome seeing our startup clients grow, and our larger clients diversify and expand — weathering the Great Recession and taking full advantage of Seattle’s tech explosion. Gay marriage is now rightly protected, and recreational marijuana is legal. Change has been nonstop.
It’s been incredibly satisfying partnering with lawyers and law firms in Seattle and around the world to help our clients accomplish their business goals. A heartfelt thanks to everyone who has supported us along the way. The list is long, and we’re forever in your debt.
Here’s to the next five years!
It pays to be strategic in describing one’s goods and services when applying to register a trademark with the U.S. Patent and Trademark Office. Following are some considerations:
- Be vague but accurate. Generally, the vaguer a description is, the more intellectual property “real estate” one gets in the resulting trademark registration. An applicant needs to be accurate, but the more words it uses to describe the goods or services associated with its trademark, the more it limits its claim. To get the broadest claim, say “shirts,” for example, not “women’s long-sleeved silk t-shirts.”
- Consider a narrow description. Though broad claims are often best, sometimes it makes sense to describe goods and services with more specificity. Narrow claims can help put distance between an application and a prior filing, which can reduce the chances of a drawing a likelihood of confusion objection.
- Consider an “off-target” description. Ideally, a trademark owner’s application would cover its core goods or services. But sometimes that’s not possible — either because the trademark owner’s core offerings are illegal at the federal level (say, because they involve marijuana), or because a prior filing would block such an application. An “off-target” description that omits the trademark owner’s core offerings can sometimes make a more limited registration possible. The umbrella of protection that extends from such a registration — even one that does not cover the applicant’s core goods and services — is often much better than no registration at all.
- Minimize descriptiveness and genericness objections. Being smart in describing the goods and services can help avoid a descriptiveness objection. The PTO can deny an application if it immediately conveys information about the associated good or service. While descriptions need to be forthright, trademark owners need not invite this objection with careless wording. In this respect, a vague-but-accurate description can minimize a “merely descriptive” objection. The same is true with avoiding genericness objections. If the applicant defines the goods or services as being the same as the mark, the PTO has no choice but to deny the application.
- Use the PTO’s pre-approved descriptions. Adopting one of the thousands of descriptions the PTO has already blessed reduces the chance the PTO will quibble with the description. Less importantly, but also a bonus, using a pre-approved description enables a TEAS-PLUS filing, which saves $50 per class. Of course, such descriptions are only appropriate if they are accurate and otherwise suit the trademark owner’s needs. Otherwise, a strategic free-form description is the ticket.
Sometimes clients ask if they can get a trademark infringer thrown in jail.
Wouldn’t that be awesome?
However, jail is not usually one of the things a trademark lawyer can deliver. Trademark infringement is mainly a civil wrong, meaning that a trademark owner is limited to civil remedies like an injunction, damages, the profits the infringer wrongly obtained through its infringement, and, sometimes, attorney’s fees.
Trademark statutes also provide that some egregious forms of trademark infringement, like counterfeiting, also constitute criminal acts. However, whether to prosecute such offenses is up to the prosecutor. It’s not up to the aggrieved trademark owner, and it’s not included as part of a civil lawsuit.
Sadly, prosecutions are rare. Unsurprisingly, resources are thin, and prosecutors usually have bigger fish to fry (such as prosecuting murderers and bank robbers).
To increase the chances a prosecutor will exercise her discretion and file criminal charges, I’d suggest making her job as easy as possible. Do your own investigation, collect all of the evidence needed to prove the case, and deliver it to the prosecutor wrapped in a bow. Even then, the chances of getting the offending counterfeiter thrown in jail are pretty slim.
That’s not to say that trademark owners should despair. Though jail isn’t likely, they can still maximize civil remedies to stop the infringement and put themselves in the position they would have been in had the infringement never occurred. That’s usually where trademark owners should devote their resources.
One of the main benefits of federal trademark registration is national coverage.
Once your registration issues, you are presumed to be the exclusive, nationwide, user of your trademark in connection with the goods and services listed on your registration. By illustration, this gives a Seattle owner the right to sue someone in Miami who adopted a confusingly similar mark after the date the Seattle owner applied to register its mark.
That’s right — the rights that flow from a trademark registration relate back to the date a trademark owner files its application for federal registration. That’s the day the world is legally put on notice that the registrant sought to claim national rights in its mark.
Here’s how conflicting trademark rights commonly sort out.
If you sell branded product in Seattle, Tacoma, and Portland, you have automatic common law rights in Seattle, Tacoma, and Portland. That means you can go after copycats in those markets who adopt a name that would likely confuse consumers into believing they are you, are authorized by you, or have some association with you.
But what about the rest of the country? Let’s say the brand owner is called ABC123, and it operates restaurants under that name in Seattle, Tacoma, and Portland. Can it do anything about a new restaurant that opens in San Francisco that is also called ABC123 (or a confusingly similar variant, like ABC124)?
Not without a federal trademark registration. Without obtaining national rights that a registration provides, the restaurant owner probably wouldn’t have any trademark rights in San Francisco available to enforce. In other words, without regularly making sales there, the brand owner probably wouldn’t have any legal basis to complain. That’s why a federal registration is valuable — it gives the trademark owner the legal basis to complain about any conflicting trademark use, anywhere in the United States.
What if there’s another restaurant called ABC123 in Miami that was open at the time the owner of the Seattle, Tacoma, and Portland restaurants applied to register its mark? As long as a registration issues, the Miami owner would locked into the geographic area in which it had been making sales (in this case, Miami) that existed at the time the owner of the Seattle, Tacoma, and Portland restaurants filed its application. This means the Miami owner would have superior trademark rights in Miami, and the Seattle, Tacoma, and Portland owner would have superior rights everywhere else. In this way, a registration whitewashes the map of the United States, giving the registrant superior trademark rights everywhere except for the local areas in which competing users had rights at the time the registrant filed its application.
This usually is the most valuable right a federal trademark registration provides. It can give the brand owner a powerful advantage over its competitors.