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Once you have registered your trademark or service mark, you will need to act diligently to maintain your registration and to protect, enforce, and defend your rights in your mark. You maintain your registration by periodically taking official actions in the Trademark Office. You protect you rights by making sure you properly use your mark in conducting your business. You enforce and defend your rights in your mark by seeing that others don't abuse your mark and by taking legal action to stop abuses. As you will see below, there is much more to maintaining and guarding your trademark rights than merely obtaining registration of them. You are best advised to establish a relationship with a trademark attorney and consult that attorney on a regular basis.
In order to maintain your registration in effect, the law requires that you periodically file documents in the Trademark Office and pay the associated filing fees. This ministerial responsibility is relatively easy to discharge.
Note Well: You must be alert, or have someone paying attention for you, and file these documents when they are due. The Trademark Office does not send maintenance notices. Also, it is important that you make sure the Trademark Office knows how to contact you or your attorney. When someone takes action against your registration, then The Trademark Office sends a notice to the last known "filing correspondent" in its record -- usually your trademark attorney. The Office does not automatically send the notice to the registrant. When the filing correspondent or the correspondent's address changes, you need to change that information in the Trademark Office by filing a Change of Correspondence Address. Your failure to respond in an official action will result in loss of your registration For as long as you do those things and pay the associated fees, your U.S. registration and the benefits of registration will remain in effect and enforceable provided nothing else serves to limit, diminish, dilute, invalidate, or destroy your rights. In addition to filing papers and paying fees, it's up to you to be diligent in the proper use of your mark and about the improper use of it by others, both discussed below. In the first instance, you can easily learn the basic rules and requirements involved in properly branding your products, both goods and services, and giving proper notification. You can see to it that the requirements are met by you and your employees and by those whom you may authorize to use your mark and those who sell your products. When something falls outside of your scope of knowledge, you should consult with your trademark attorney and be sure you get it right. If you ever have to get into a dispute over your trademark rights, you don't want to have given the other side the ammunition to shoot you down. In the second instance, having a connection to the Internet, you may be able to do a reasonable job of watching the Trademark Office for evidence of others trying to register marks similar to yours. Also, by reading trade journals within your field of business, attending trade shows, and simply doing business, you are keeping watch on the terrain in the immediate vicinity of your business, in terms of geography and specialization. Outside of your immediate market and the U.S. Trademark Office you may need help. Most intellectual property law firms and some service bureaus provide watch services that look broadly for potential sources of conflict, using methods similar to those of a pre-application search. What recommends using this kind of service is that it is most often easier and less expensive to deflect potential conflicts than to remedy actual ones. (Be careful, however. Some of these services that we've seen offer less than what you pay for.)
In the course of doing business, in order to maintain your trademark rights, you have a duty both to take care to use your mark properly and to take action to ensure that others do not misuse and abuse it. The first of those things is something over which you have direct control. The Care and Feeding of Your Mark Trademark rights are vested in continuing use of the mark in the market place, use on or in connection with particular goods and/or services, and use in a manner that identifies for consumers a particular source of the goods and services they are buying. That is, regardless of registration, your rights in your trademark exist only to the extent that you continue to use the mark properly to identify your products in the marketplace. Continuing use means that in order to maintain the validity of your mark and your rights in it, you have to be using it. It doesn't mean that the moment you go on vacation, or discontinue a product for a period of time, you lose your trademark rights and your registration, particularly if you have a clear intention to return to using the mark. However, as soon as you stop using your mark with your goods or services, your rights begin to fade, and how long it takes for them to fade away completely is directly proportional to how strong your rights were in the first place. That is, the owner of a mark that is well known -- whether in general or only to consumers in a particular field or industry -- will continue to have rights in that mark for a long time. The Trademark Act sets three years as the length of non-use after which a mark can be declared abandoned and its registration canceled, but courts have not been even that patient with marks that were barely used, and have been more patient with famous marks. (In a notable case, ownership of the mark AMOS AND ANDY and its validity as a trademark were upheld more than 20 years after its owners had stopped using it.) So, maintaining (and strengthening) your rights in your mark means that you keep up "substantially continuous" use of that mark on your goods or in connection with your services in interstate or international commerce, and, when there must be an interruption in use, that you establish your intention to take up its use again. Use on goods and in connection with services means that you are expected to develop and maintain a close identifying relationship between your mark and the products you use it to identify. The general use of the word "brand" to mean trademark or service mark suggests how close that relationship should be. The requirement that you use a trademark on goods originally meant that you stamp, scratch, or even burn the "mark" onto or into the product. In modern times, use on name plates, labels, packaging and, under certain conditions, displays is considered to be use on the product. The general rule is that your mark must "move with" the goods it identifies as yours as the goods move in trade. Use in connection with a service is a bit less hard and fast, since there is nothing tangible to "mark." Your service mark is expected to appear unambiguously on any offer of a service it identifies as yours, and also on any literature or other form of documentation used in the providing of the service. That is, the connection you create between the service you provide and its brand identity is expected to be strong. So maintaining your rights in your mark depends on your making sure that you properly brand your goods and services with your mark. Use in a manner that identifies a single source means, in part, that you do not carelessly allow your mark to be connected with other products that are not yours -- even if you happen to be also selling or providing those other products. It also means that, if you allow others to use your mark, you take steps to ensure that they use your mark on your goods (made or supplied by you), or in connection with your services (provided by you). Otherwise, it further means, when you allow others to use your mark on goods you don't supply or with services you don't provide, that you do so under conditions, generally defined by a license agreement, that give you control over how the goods are made and sold, or how the services are offered and provided, and that also explicitly reserve your rights in your mark. Taking Control Although the general requirements for properly using trademarks and service marks are relatively simple and direct, trademark owners still make potentially costly mistakes, whether out of misunderstanding or lack of attention. The most common of these are: Notice Particularly prior to registration, it is very important to provide public notice that you claim trademark rights in your mark. This is easily done by using the symbol TM with trademarks and SM for service marks, usually placing the symbol as a subscript or superscript next to your mark. After registration, those symbols are replaced by the ® symbol of a registered mark. Where the symbol is graphically awkward or uncomfortably repetitive in text, then the mark should always be made prominent in some way (e.g., bold text) and a footnote should identify the mark, the proper claim of rights, and the owner. Labeling A trademark is a device used to distinguish the particular products of one maker or provider from those same or similar products of another. For example, anyone can produce orange juice, but only The Coca-Cola Company can make MINUTE MAID® orange juice, and only Sunkist Growers, Inc., can package and sell SUNKIST® orange juice. Furthermore, no one can claim trademark rights to ORANGE JUICE -- at least not for use with orange juice -- because that would leave the makers of MINUTE MAID and SUNKIST juices no way to tell customers what the product is. "Orange juice" is the generic term for juice made from, or flavored to taste like, oranges. The reason for being conscientious about labeling, both in close connection with your products and literature about them, is that when a trademark for a kind of product becomes the term used in ordinary discourse to name that kind of product in general, the trademark itself becomes a generic term for the kind of product, and the owner's trademark rights are lost. There are legends of once powerful brands being lost to the natural evolution of language -- cellophane and aspirin[note] being two well-known examples -- and owners of popular, valuable brands go to great lengths and expense to make sure generalization of their brand names doesn't happen to them. It's KLEENEX® tissues, WATERFORD® crystal, XEROX® copy machines, and NUTRI/SYSTEM® weight loss programs. The trademark or service mark is an adjective (NABISCO) identifying the source of a particular instance of a generic class of product (crackers). When you start using your mark as the name of the thing you make or do, you hurt yourself. Even if you never achieve the dubious pinnacle where everyone is calling the thing you make or do by your name, the damage you do by careless use of your mark will show up at the time when you can least afford it -- when you're trying to enforce your trademark rights. Licensing It's your mark labeling your products. When you let others use your mark to label goods they make or services they provide, you begin to lose your rights in your mark, unless the use of your mark by others is authorized by you under a license that gives you control of how the mark is used and the quality of the products with which it is used. A trademark licensing agreement can contain any number of other terms related to business matters, such as licensing fees and geographical limits. Trademark licensing terms can also be part of another sort of contractual arrangement, such as the sale of a business, a franchising agreement, or even a divorce agreement. Regardless of the instrument that contains it, the license must describe at least four important elements: limitation of use of the mark to particular goods and/or services; identification of the mark and specification of its appearance; control over the quality of the goods and the manner in which services are provided; and reservation of your trademark rights to you.
Maintaining your rights also requires you to be vigilant about what others are doing, or may do, in the marketplace and to take action when the actions of others threaten your rights, your business, and your reputation. The ways in which the actions of others diminish and destroy your trademark rights are, generally, infringement, unfair and/or deceptive use, misuse (for example, use as a generic term), and dilution. Infringement In its plainest form, infringement of your rights occurs when someone takes your mark and puts it on their copies of your products. However, legitimate ownership of a trademark or service mark, especially by virtue of the benefits provided a registered mark, gives you the right to prevent others from using the same or similar marks on goods and services that are the same as, or related to, yours. What that means is that, if you own a trademark MARK for use on instructional audio cassettes, video tapes, CDs and DVDs in the field of exercise, health, and fitness, then someone else's use of a service mark SIMILARMARK for providing yoga instruction services would probably be infringement of your rights in MARK. The general rule is that infringement occurs when someone's use of a mark serves to confuse or deceive consumers so that they form a mistaken belief about who is making the goods, or making them available, about who is providing the services, and/or about the nature and quality of the products. The most egregious infringement is the making and selling of knock-offs (counterfeits) -- cheap imitation products bearing the same brand as the popular originals. However, much infringement occurs out of ignorance or innocence. For example, without knowing about another's related product, and not having searched the public registries for marks used with related products, someone may choose a mark similar to one already in use. This happens most often with suggestive and partly descriptive marks. Someone else may not even realize he is infringing on another's mark, or may honestly believe her use of a mark identical or similar to another's is not infringement. For example, someone opens a store to sell collectible model cars, model car kits, remote control cars, and decorative car accessories and calls the place "BARNEYS HOT WHEELS SHOP." Barney probably knows that HOT WHEELS is a brand of tiny toy cars but may believe that he is not infringing the HOT WHEELS trademark, because he is not selling tiny toy cars of any brand. Barney's belief would be wrong, and it's a practical certainty that toy manufacturer Mattel will promptly seek to educate Barney. The important point is that, malicious or innocent, any infringement of your mark that is known to you and allowed to continue works to erode and ultimately destroy your legitimate rights in that mark. As soon as you know about any infringing use of a mark similar to yours, you must do something to enforce and defend your rights. Failure to act may result in loss of your rights. Unfair, deceptive, and abusive use Unfair competition and deceptive trade practices encompass a wide variety of activities conducted with malice that are generally intended to keep or take customers away from a competitor. These can range from conspicuous larcenies to cunning counterfeits. Fire-bombing the competition's store is obviously an unfair competitive practice, and so is distributing a bogus press release calling into question an aspect of the competition's business. Unfair and deceptive practices involving on trademarks usually take the form of using the mark of another, one that is well known or known in a particular field or market, in order to benefit in some undeserved way from the good reputation attached to that mark. These unfair uses are not infringement, in that they don't use the abused mark to identify the goods or services of the abuser, but rather seek to trade off the reputation of the trademark owner or harm that good reputation. These things most often happen in deceptive advertising -- such as bait and switch ads, where a vendor will advertise a sale on a well-known brand with the primary, or even sole, intent of selling a different product.
Subtle deceptions can involve advertising the truth. For example ...
It would be hard to argue that the purpose of such an ad was anything other than an intentional attempt to benefit from the reputation of the established brand. Unfair use can be even more subtle. If Willy makes a variety of specialized auto-roof-top carriers, it would seem to be natural to display his Willy-Porters in catalogs and advertising atop automobiles, even atop the vehicles most likely to be driven by people who need such carriers. Willy could do this by picturing his carriers on the rooftops of cars, or atop a nondescript, generalized SUV, and saying as a matter of fact what makes and models of vehicles they fit. Instead Willy chooses to show them conspicuously on Land Rover® estate wagons and Ford's Explorer® trucks. If Willy does that without permission, that's unfair, because, seeing the Willy-Porters on the well-known vehilces, consumers may reasonably believe that the vehicle makers endorse Willy's products for use on their vehicles. It is also intrusive, because such a belief by consumers may tend to expose the vehicle makers to claims of liability for the damages that result whenever one of Willy's carriers comes off of one of their vehicles and crashes through someone else's windshield. Although unfair and abusive activities may not directly threaten your rights your mark and cause your registration to be invalidated, they can affect your bottom line by taking business away from you. More seriously, however, such abusive activities can directly affect the relationship between you and your customers and clients by diminishing the public perception of your products, tarnishing your commercial reputation, and exposing you to consumer complaints for which you should not have to answer. These effects will ultimately wear away your trademark rights and the value of your brand, if allowed to go on unchallenged, and you're bound to do something about them. Misuse Just as you need to take care to use your mark properly, you need to take care that others use it properly, too. In most cases, misuse by others is unintentional, and in fact it's mostly done by those whom you want to use your mark: your sellers, customers, clients, the general and trade journalists who write about your products, and the entertainment industry. For example, you make a line of emergency replacement parts branded MARKELEY replacement parts. You have a network of authorized dealers and installers who each have an exclusive territory, and you want them to advertise their use of genuine MARKELEY-brand replacement parts. You've just picked up an important dealer in Indiana, who goes out and has his fleet of 100 fast-response emergency service vehicles repainted to include, "We use genuine MARKLEY parts." You have to do something about that, not only because that's not your trademark, and it's use, misspelled, doesn't strengthen your rights in your mark, but also because, if you don't do something, your dealer will eventually acquire trademark rights in MARKLEY that he or she can then use on competing replacement parts. (In such a case, with a new, important dealer, you may want to offer to help pay for the correction.) Most misuse involves someone else doing what you're careful not to do in labeling your products, calling the product by the trademark. When you create a slogan for your advertising, you will be careful to say, "When you need it fast and it has to fit, make it a MARKELEY replacement part!" Others may not be so careful, and you have to be sure your dealers don't advertise "Make it a MARKELEY" and that writers don't write that the plant manager markeleyed the machine back into service, and that the Harrison Ford character doesn't say to the Brad Pitt character "Hand me that markeley." For years Kimberly-Clark has run advertising in trade journals admonishing writers, editors, movie producers, and the like that KLEENEX® is "spelled with an R," and that it's not "a kleenex," but a KLEENEX® tissue. When you let others take liberties with your trademarks and service marks, you allow your rights to slip away. Dilution "Dilution" of a trademark is a legal concept long acknowledged in law and now codified in the trademark statutes. It is a cause of action that is not available to most trademark owners. It deals with the special circumstances of famous federally-registered marks. As noted above, infringement occurs when a mark identical or similar to a legally established mark is used on similar or related products. It does not usually occur when even an identical mark is used on dissimilar products, especially when those products are sold to different comsumers in different channels of trade. However, the law recognizes that certain marks are so well known that their use on anything would likely call to mind the owner of the famous mark and lead consumers to reasonably believe that the famous company made, provided, and stood behind that product or service. For example, if someone is using RUB-A-DUB as a trademark on motor oil, it should not be infringement for someone else to use RUB-A-DUB for television sets or provide ROB-A-DOB financial services. But what about a mark identical or similar to TEXACO? It's hard to imagine anyone in the United States who doesn't know that trademark. Texaco, Inc., makes fuels, lubricants, parts, and accessories for cars and also for other specialized vehicles and machines under the TEXACO brand. They sell caps and t-shirts under that brand. They have been prominent sponsors of race cars and of entertainment, recreational, and cultural events where they tout that brand. They don't make TVs, and they don't provide tax preparation services, and the TEXACO things they do make and provide are not marketed through electronics stores and professional financial firms. So TEXICO televisions and TAXACO accounting services should not infringe TEXACO fuels and refinery services. However, Texaco, Inc., might feel justified in bringing a claim of dilution of their TEXACO brand against a consumer electronics company that markets TEXACO televisions or even an accountant who offers TAXACO tax preparation services. The issue is not literally infringement. Rather, it is whether TEXACO is famous -- a determination that is not necessarily a given, by the way, even in the case of such a well-known brand -- and whether such other uses may dilute the identification of the Texaco company's brand with its company.
It is up to you to take care of your trademarks and service marks. You need to know how to properly use your marks, or you need to ask someone who does know. You need to keep track of the due dates of maintenance actions in the Trademark Office, or you need to have someone paying attention to that for you. Doing business in a particular market, you will probably notice misuse and abuse of your mark in that market, but you need to also watch other markets and other places for the kinds of unfair, malicious, careless, and ignorant acts that can erode and even destroy your trademark rights. Having done all that, having carefully chosen and nurtured your brand identity -- at no small expense -- and having registered your trademarks and service marks, you must also act take care of them. There are a number of actions you can and should take, and sometimes those extend to taking legal action. Giving Notice Litigation, even an agency-level proceeding before a regulatory board, is expensive, inconvenient, and time-consuming. It is also an uncertain process, no matter how strong you and your attorney believe your case to be. When you bring legal action, you place the determination of the outcome into the hands of others, whether a single judge, a tribunal, or a jury, who may not see things the way you do, or even the way they should. In most cases, it is preferable to try first to resolve the matter informally. In any case, when you become aware of a misuse or abuse of your mark, the first thing to do is to put the other party on notice, and the sooner you do that, the better. Someone who innocently misuses your mark, when there was no apparent reason to believe your rights were being tread on, is almost never liable for acts committed prior to notification. For that reason, your proper use of the TM and SM symbols prior to registration of your mark, and especially your registration and use of the ® symbol, are important and play an important part in determining the time from which recoverable damages can be calculated. However, your direct notification of an abuser is unambiguous and becomes the latest date at which the abuse can be said to have begun. How you deliver the notice depends on the particular situation. In cases where the activity is recent and appears unintentional or uninformed, a telephone call from you is often the best and quickest remedy. In doing so, however, it's best not to begin by threatening dire consequences, or by threatening at all, no matter how angry or threatened you feel. Your threats won't inspire willing cooperation, and you probably don't understand the law and its terminology well enough to make threats that can be taken seriously. So, your contact with another party who is trespassing on your trademark rights in some way is best seen as informational, and best accomplished in a firm but friendly manner. It also helps to be open-minded, especially with regard to the outcome you expect. Since the trespasser is probably engaged in a related business and shares your interests in some way, the misstep that brought the other party to your attention may also bring you a new customer, a new supplier, or a profitable business opportunity. Contact by an attorney is almost always going to be seen as threatening. However, when your direct contact is unproductive, or when it seems inappropriate, you should let a professional who understands the rules and the remedies handle it. The first goal of the attorney you choose should be to resolve the disagreement short of litigation and compensate you for any losses. When settlement proves impossible, then you may have no choice but to begin a formal action against your abuser. Formal action does not necessarily mean rushing into federal court with your complaint. Except for cases where the financial loss and damage to your reputation is great and immediate, it is often best to take advantage of the help you can get from various government agencies. In any event, the first aim of initiating formal action against an abuser of your rights should be to bring the other party into the process of finding a solution. Often the simple event of receiving notice from a court or regulatory agency that a complaint has been filed is enough to jump-start the out-of-court settlement process. Actions in the Trademark Office In general, actions in the Trademark Office will involve an application for registration of a mark, yours or someone else's. If you catch a potential infringer early enough, in the act of trying to register a potentially infringing mark, you can protest or oppose its registration. Or, sometimes, trying to register your own mark, you may find another's application or registration standing in your way. Under certain circumstances you can move to cancel an interfering registration or oppose the interfering application, or there may be a way, not harmful to you or the other party, for both of you to use the mark for your respective purposes through concurrent use or consent. Protest Examination of a trademark application transpires between the applicant and the examiner. Third parties are barred from interfering directly. However, acknowledging that others may know things that the examiner would not know and could not discover in the ordinary course of examination, the Trademark Office provides an avenue by which anyone with an interest in a particular application may put information before the Office. Facts relevant to the examination of a pending application may be conveyed by letter to the Commissioner, and the Commissioner may then choose to bring those facts to the attention of the examiner. This is better done early in the application process, before the application is published, and it must be done before the mark becomes registered. The action of the Commissioner is discretionary, and a letter of protest is not supported by force of law, so that the decision of the Commissioner is not reviewable by anyone else. Still, if protest works, it's an inexpensive solution to heading off a conflict of rights before any legitimacy is accorded the potentially conflicting claim. Registration refused usually discourages use of the refused mark. Opposition Prior to registration on the Principal Register, an application must be published for opposition. When that happens, anyone who, for good cause, believes that registration should be denied may bring an action in the Trademark Office in opposition to registration. Opposition takes the form of civil litigation before an administrative court, the Trademark Trial and Appeal Board. The outcome of an Opposition proceeding can be denial of federal registration and rights under federal trademark law, and any decision of the Board carries the weight of law. Cancellation Attempting to register your mark, you may find your application refused on the basis of an existing registration of a similar mark for use with products similar to those you identified as yours. When this happens, and you have knowledge or reason to believe that the registration standing in your way is, or has become, invalid, you can petition the Trademark Office to cancel the registration. There are several reasons a prior registration barring your registration may be held invalid: As happens sometimes when a business fragments, someone with no interest in the continuation of the business, or parts of it, may have obtained registration of the business's trademarks and not continued to use them. Registration can have been granted to a "second comer" -- someone whose rights from actual use in the marketplace are not as established in terms of duration or market penetration as yours. A registration belonging to a business that did not survive may still be in the Register. An existing registration remains in effect for years -- ten years between each renewal -- and the registration will stand valid until the registrant fails to maintain it. Also, a registration placed on the Supplemental Regsiter is not subject to Opposition, so that opposition to it must be brought by means of a Cancellation proceeding after its registration. Like the Opposition proceeding, a Cancellation proceeding takes the form of litigation in the Trademark Office As a trademark registrant, you may also find yourself the defendant in a Cancellation action. Very often a Petition to Cancel is initiated in the belief (or hope) that the registrant is no longer in business, or at least may not answer the complaint. A Petition to Cancel a registration must be answered by the registrant, or the registration will be lost by default. For that reason, you must be sure your contact information in the Trademark Office is always up to date, and you must be sure to respond promptly to any notice of an action against you. Consent There is no way for the examiner of a trademark application to know more than what is put in the application and what other information exists in a few, obvious sources of public record -- primarily, Trademark Office registration records, the dictionary, and, lately, the Internet. For that reason, your registered or applied-for mark may be put into contention with that of another on the basis of appearances, only, when both you and the other party know that there is no conflict between your respective uses of the marks, nor any likelihood of consumer confusion. When that is the case, it may be to the benefit of both parties to enter into a Consent Agreement in which each party consents to the registration and rights of the other. When put before the Trademark Office, the agreement makes clear that both trademark owners, who best know their respective marks, products, markets, and customers, should be entitled to registration and separate protection under trademark law. When this can be done without diminishing the strength and value of the senior registrant's rights, it has the effect of clarifying the claim of rights of each registrant. However, consent cannot, and should not, be used simply to avoid litigation. To be accepted by the Trademark Office, the agreement cannot merely say that both parties acquiesce regardless of the consequences. Rather it must state that there are significant differences, especially in the products, the markets in which the products are traded, and/or the target consumers for the products. In making those concessions, each registrant explicitly gives up to the other areas in which he would otherwise be able to enforce and defend his trademark rights. The Consent Agreement is not a trivial matter. Concurrent Use The concept of Concurrent Use comes out of a time when goods were transported by horse-drawn lories and trains with steam locomotives, long before the prowess of a particular manufacturer of widgets could be broadcast in an instant to the entire world. Unlike a Consent Agreement, the basis of Concurrent Use is that the marks, the goods and services, and the relevant consumers are so similar that registration cannot be granted to separate owners, but that the marks are not used in the same physical or virtual marketplace. Concurrent Use registrations divide the market among two or more registrants, usually by geography, setting explicit boundaries around the area in which the benefits of each registration may be claimed and enforced. In a time when markets expanded slowly, growing geographically outward from the physical location of the manufacturer or provider of a product, Concurrent Use proceedings were more common and more often applicable to circumstances. Today, the circumstances to justify Concurrent Use registration are limited to only a few goods that are not practical to transport over long distances -- for example, heavy steel components for major construction and large stone products -- and a few services the providing of which is located in a specific place -- such as regionally interesting resorts and amusement parks. In these cases, the goods may be transported to, or consumers of services may come from, only the states surrounding the one in which the products originate. Although a Concurrent Use proceeding almost always comes out of an Opposition or Cancellation proceeding, where one or both parties discover that such an outcome is warranted by the facts and their respective interests, any trademark owner may directly petition the Trademark Office for a judgment of Concurrent Use. Trademark Matters in Other Federal and State Agencies Assistance both in preventing and stopping abuse of your trademarks is available from other federal agencies and some state agencies. U.S. Customs and Border Protection The Customs and Border Protection ("CBP") bureau of the United States Department of Homeland Secutiry provides for placing into its system notice of your U.S. trademark registration. It must be a valid federal registration on the Principal Register, not a Supplemental registration, state registration, or claim of rights under common law. Once filed with the Service, goods like those identified in your registration that enter the U.S. bearing your mark, or something obviously similar (the Service is not equipped to make discriminating judgments), will be detained, and it will be up to the source exporter or the local importer to show that the use of the mark is proper. Absent such a showing, and especially after an order of the International Trade Commission or a federal court wherein infringement, counterfeit, or other trade violations have been proven, the Customs Service will seize the goods, can order their forfeiture and assess fines and other penalties. Depositing your registration with the CBP is not absolute protection against infringement and other abuses of your marks from abroad. Where the evidence of the mark is not included on the shipping and customs documents, and where the goods in containers are not physically inspected, importation of infringing goods can be missed. For that reason, the CBP encourages your assistance in identifying particular sources and ports of entry, and even particular shipments, of infringing goods. U.S. Post Office The U.S. Postal Inspection Service works with the U.S. CBP to identify and detain shipments of infringing and gray market products sent into the United States by mail. These products can include services offered and provided by letter mail. However, such interception is still a CBP function, and the filing of the U.S. registration is still done in the CBP. The Trade Commissions The U.S. International Trade Commission regulates trade between the United States and other countries. The U.S. Federal Trade Commission regulates trade among the states. The regulatory functions of these commissions include the power to enforce trade regulations, including trademark infringement and a broad range of unfair and deceptive trade practices involving trademarks, by bringing legal actions against foreign exporters and domestic providers of goods and services. These powers include the levying of fines and the impounding (and sale to satisfy fines) of goods. In fact, while Customs And Border Protection may block the importation of goods and services bearing infringing trademarks, it takes an order of the International Trade Commission for it to impound and take possession of such things. State Consumer Protection Authorities Every state has, to a greater or lesser degree, a state agency or departmental function that is empowered to act to protect consumers from fraud and deceptive practices. Many instances of trademark abuse involve some sort of deceptive trade practice and may run afoul of local consumer protection laws. These authorities are often helpful in stopping and preventing misuse of your trademarks on a local level, before the matter becomes serious enough to be brought before the courts. Furthermore, even when a case of abuse of your trademark has become a state-wide or a federal matter, these authorities are useful in eliminating, discouraging, and controlling individual instances of misuse. Actions in the courts The actions brought before the federal and state executive authorities outlined above, and matters brought to their attention, can serve to help you discourage and stop misuse and abuse of your trademark. However, none of those authorities can help you recover damages you may have sustained. To recover financial losses from lost sales, to regain lost profits taken by others in sales of infringing products, and to be compensated for damage to your business and reputation, you have to take your claims to court. Note that, in all matters brought before the courts, the questions of jurisdiction and venue are extremely important. In matters first decided in the Trademark office, the jurisdiction of Federal Circuit, located in Washington, DC, is well established. Otherwise, determination of jurisdiction over a person or business, and determination of venue (where the dispute can be adjudicated) in civil and criminal actions are thorny calculations, and these, along with the choice of court itself and the claims to be brought to it, should be considered only with the guidance of a competent attorney. Federal Courts Having a U.S. registration automatically gives you access to federal courts for claims of infringement and of dilution of a famous mark. In addition, some claims, including false designation and false representation, can be brought in federal court with regard to unregistered trademarks and trade names, when it can be shown that confusion among consumers or actual damage to the claimant has occurred or is likely to occur, and that the claimed offense occurred in interstate or international commerce. Furthermore, those who have been, or may be, damaged by someone's misuse of your federally-registered mark may have standing to bring suit against that party in federal court. In instances involving widespread distribution of inferior products by others using your mark, this can bring you allies who may join in your attempt to redress the damage done. State Courts Without federal registration, however, most matters of misuse of trademarks must be treated in state courts under laws governing unfair and deceitful trade practices, consumer protection, and various claims in common law (torts), such as breach of contract, defamation, and fraud. Appeal from the Trademark Office All decisions of the Trademark Office may be appealed in federal court. These will involve denial, cancellation, and revocation of registration initiated by or in the Trademark Office. Actions of trademark examiners are reviewed by the Commissioner, regarding certain subject matter, or appealed to the Trademark Office's Trademark Trial and Appeal Board. Thereafter, appeals from decisions of the Commissioner in certain areas, and from all decisions of the Trademark Trial and Appeal Board, are heard in federal appellate court, usually the Court of Appeals for the Federal Circuit. The Trademark Office is subject to the federal courts, so that it may not consider an action involving a registration that is the subject of a proceeding in a federal court. The Trademark Office and federal registrations are not subject to any state court. MINUTE MAID® is a registered trademark of The Coca-Cola Company
These marks are used for illustrative purposes, only, and do not represent any endorsement or participation by the trademark owners.
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