What are the benefits of a federal trademark registration?
Answer: There are many benefits of a federal trademark registration, both direct and indirect. Direct benefits are numerous and include:
- National protection of the mark;
- Ability to obtain injunctions stopping infringers;
- Ability to use the registration to apply for foreign trademark registrations;
- Greater access to the federal court system;
- Assistance from the United States Custom in stopping counterfeit and infringing goods from importation; and
- Attorneys fees when proper notice has been attached to the goods or services. I
In addition to these considerations, trademark registration provides indirect benefits in the form of being able to point to it when protecting marks used for social media accounts, protect against improper use in search engines, ability to obtain new domains in sunrise periods, and providing great leverage in UDRP and URS disputes against cyber-squatters.
Why Provide these Benefits
Providing these benefits serve two primary functions. By granting these rights to trademark owners the government helps to incentivise business owners by helping to protect the goodwill embodied in their brands. This in turn helps protect consumers by letting them know that when they buy a product, that the product originated from the brand owner and not an impostor. This ability to build a portfolio of valuable business assets has obvious benefits to any business owner.
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I filed a trademark application recently and suddenly I have been receiving papers from all these companies saying that I owe more money to finalize my trademark. Is this some kind of trademark registration scam?
Answer: In December (2016) the Department of Justice announced that two men had pled guilty of a scamming owners of US trademark applicants. Through there company called the Trademark Compliance Center (TCC) and Trademark Compliance Office (TCO), the men, Artashes Darbinyan and Orbel Hakobyan, stole approximately $1.66 million from registrants and applicants of U.S. trademarks through a trademark registration scam by sending fraudulent solicitation for additional filing fees.
The USPTO worked with California law enforcement in this case and takes a number of steps to fight solicitations from companies fraudulently promising to protect trademarks. These questionable solicitations have been growing problem, both nationally and globally over the years. To help combat this, the USPTO has taken a number of steps.
1) Each Office Action regarding an application includes a warning and a link to the USPTO Non-USPTO Solicitations page.
2) A bright orange paper with a warning is sent along with every registration.
3) the USPTO maintains a list of non-USPTO solicitations on our Non-USPTO Solicitations page that the public can use to check against and they encourage the public to contact them with new solicitations so that the list can continually be updated.
Similar scams involve organizations contacting registrants claiming to represent foreign trademark offices, claiming that someone is attempting to register their trademark in their country’s registry. They then offer to register the mark in that country for you to prevent to claim jumper from moving in.
A registered trademark is a valuable asset, and where there’s money, unfortunately, there are bound to be criminal elements lurking. The USPTO continues to provide its ongoing full support to U.S. law enforcement officials working on this issue.