Is this a Scam? – Invoices to Maintain your Registration

Is this Invoice from the Patent & Trademark Organization a Scam? If you are asking this, the answer is probably yes. Over the years there has been an ever increasing number of private companies that have taken it upon themselves to offer either non-existent services or services that have no benefit to businesses registering their trademarks. The trademark scam typically starts with a very official looking letter arriving in the mail with a very official name on it like the "Patent & Trademark Agency," Patent & Trademark Organization," or "TPP – Trademark & Patent Publications." The letter mentions a real trademark application and then states that some fee is due to put it on their registry, or to block someone else from registering it on their register. Even if their register or publication exists, it provides no legal protection - it is just a vanity publication. Sometimes these fees are higher than what the person paid for their original application. These documents...
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Trademark Application Timeline

Trademark Application Timeline

How long does the trademark application process take? Answer: While there is no absolute answer - for most applications the  trademark application process takes between 8-12 months and can be broken into several stages - each with its own variables. Step One - Trademark Clearance: The first step is the one before you file the trademark application.  Prior to filings any trademark application, you should take time to review prior registrations that might block your application from being accepted.  This can be done by you or by a trademark lawyer. When working with an attorney, this involves discussing the mark and your business, and it typically takes between 1-7 days depending on the type of trademark screening you decide to have done and the attorney's workload. Step Two - Preparation of Application: Assuming your trademark is cleared, an application is prepared based on the information you provide, and if working with a trademark attorney, the analysis of the lawyer.  You can count on 2-3 days for this...
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Related Goods & Likelihood of Confusion

Related Goods & Likelihood of Confusion

What are "Related Goods" for the purpose of evaluating Likelihood of Confusion? Answer The leading case on evaluating likelihood of confusion is the 1973 case E. I. DuPont DeNemours & Co.   In it, the Court sets out a series of factors  to be evaluated when determining likelihood of confusion under § 2(d) of the Lanham Act.  One of these factors looks to see if the two marks are used on "related goods" or services or if their marketing activities would result in consumer confusion. If the goods are not related at all, or they are NOT marketed in a way where potential consumers would incorrectly create an assumption that they come from the same source, then, even if the marks are identical, confusion is not likely. When evaluating whether goods are related goods and precluded from registration, courts have repeatedly noted that the question of relatedness requires a showing that the goods are connected in the minds of the consumer. They, in...
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Benefits of a Federal Trademark Registration – FAQ

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...
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Trademark Registration Scam – FAQ

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...
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Common Law Trademarks – FAQ

Am I protected with a common law trademark - without federal registration? Q: I recently started professionally my photographs in the US.  I registered the copyright for photos and have decided on new name for my company.   I think the name is pretty distinctive and I am not aware of anyone else selling a similar product by the same name.   Do I have to register my company name as a trademark to prevent others from using it or can I rely on the laws concerning common law trademarks? A: Kenneth’s answer:  Since your mark is not registered you are limited to the common law trademark rights. Common Law Trademarks are generally limited in scope to the geographic area where the mark is known (think of a restaurant where everyone has heard of it in one town, but is unknown in another). Common law trademarks can be enforced (but not as well and as easily as registered marks) in both state and federal courts. In...
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10 Trademarks Just in Time for Halloween

10 Trademarks Just in Time for Halloween

While some folks might think trademarks can be a little scary, I know that they can also be a little fun. G&S: Processed cereal-based food to be used as a breakfast food, snack food or ingredient for making other foods.Serial (no pun intended) 85120586 and 85120583 G & S: Beer.Serial: 86110135Yes - a stumbling disheveled guy is your image for beer - why didn't this get rejected as merely descriptive? G & S: Books in the field of children's literature.Serial: 86271191Whenever I put my child to bed, I always like to talk about monsters too - keeps her quiet when I tell her how she will get eaten-up if she asks for a glass of water. G & S: Parlour games.Serial: 86222077What the heck is a Haint you ask?  Well I had to look it up too - God bless American entrepreneurship.http://www.haintinabox.com/ G&S: Magazines featuring women modeling in horror-themed pictorials for entertainment purposes.Serial: 86506372And Playboy decided to get out of the nudie business - perhaps...
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Trump’s Trademark Issues

How long has Trump been planning this? Apparently Mr. Trump decided he liked the sound of "Make America Great Again" as  far back as 2012, when he first filed an application for the phrase with the Trademark Office (Serial 85783371).   However, in the application he seems to be  anticipating using it for a Political Action Committee, rather than for his own candidacy. The required list of services he listed were as follows: Political action committee services, namely, promoting public awareness of political issues. (IC 035) Fundraising in the field of politics. (CIC 036) However he was apparently not ready to use it back then, as he did not finalize the registration until earlier this year - about a month before he formally announced. Trademark Issue #1 Subsequently, on August 13th two new filings  (86724115 , 86724213) were made by him for the phrase and include an exhaustive list of such items as   Bumper stickers; decorative decals for vehicle windows; stickers; advertising signs of papers; advertising signs of cardboard; placards and banners...
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Color-only Trademarks

What do UPS, Tiffany and Co., and Owens Corning have in common?  The mere sight of the color of their product (Pullman Brown, Robin's Egg Blue, and Pink) brings to mind who they are without ever having to place a logo or word on their products.   These marks demonstrate how real people shop for goods and services and how trademarks are about providing a potential consumer resources to identify the source of the goods and services they are purchasing - while preventing others from using those identifiers to create consumer confusion. Color Trademarks The leading case involving color as a trademark is  Qualitex Co. V. Jacobson Prods. Co. (514 U.S. 159, 161, 163, 115 S. Ct. 1300, 131 L.Ed. 2d 248 (1995)), which noted that a color can sometimes serve as a trademark by itself  “when that color has attained ‘secondary meaning’ and therefore identifies and distinguishes a particular brand (and thus indicates its ‘source’).”   The Court went on to provide that...
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I have a great idea for a tee-shirt!!!

Tee-Shirt Trademarks I have a great idea for a tee-shirt - can I register it as a trademark??? Short answer - probably not.  The main issue with whether a slogan or word  operates as trademark is how it is used.   This is especially true of tee-shirts. If the mark / slogan is just printed on a shirt – no protection – the Trademark Office deems that as being “merely ornamental” (there is an exception when the mark is also used for other products or business name).  However if the mark / slogan is also used to identify the tee-shirt company, it may serve as a trademark and be registered (i.e. it is a “source identifier”) – the only caveat is that you would need to show it being used in that manner rather than just emblazoned on the front.  Showing the mark this way can be done be showing the phrase on things like the name of an online store, packaging, an inside-tag,...
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