Trademark
Monitoring

Yes, changes can be made to an application, though the process and fees vary based on the timing. If you need to make adjustments before the trademark is published in the Official Gazette, simply log into your Federal Mark Pro account and request the change. Additional fees to Federal Mark Pro and filing fees to the USPTO may apply.

For changes after the trademark is published in the Official Gazette, a Post-Publication Amendment is generally required. Federal Mark Pro can assist with this process.

The extent of the amendment determines whether a new application is necessary. For example, changes that expand the scope of a description or add international classes may require extra fees and a new application. Clerical errors, however, are usually easy to fix and don't typically require a new application or affect your place in line.

Yes, a trademark can be sold, licensed, or assigned just like any other business asset. Validity requirements still apply, meaning someone must continue to use the mark in commerce, and it is beneficial to register assignments with the USPTO. If you enter into such an agreement, Federal Mark Pro can assist with transferring the trademark with the PTO. Often, individuals register a mark before a company is officially established. Once the company is formed, the mark needs to be transferred to the company.

Trademark infringement occurs when a trademark or service mark is used without authorization on or in connection with goods and/or services in a way that is likely to cause confusion, deception, or mistake about the source of those goods and/or services, according to the USPTO.

According to the USPTO, the key factors considered in most cases are the degree of similarity between the marks at issue and whether the parties' goods and/or services are sufficiently related that consumers are likely to assume (mistakenly) that they come from a common source. Other factors that courts typically consider include how and where the parties' goods or services are advertised, marketed, and sold; the purchasing conditions; the range of prospective purchasers of the goods or services; whether there is any evidence of actual confusion caused by the allegedly infringing mark; the defendant's intent in adopting its mark; and the strength of the plaintiff's mark.

Trademark dilution is an infringement theory alternative to consumer confusion. According to the USPTO, a trademark owner may claim trademark "dilution" by asserting that it owns a famous mark, and the use of another mark diminishes the strength or value of the trademark owner's mark. This can happen through "blurring" the mark's distinctiveness or "tarnishing" the mark's image by associating it with something distasteful or objectionable, even if there is no likelihood of confusion.

A Cease and Desist Letter is sent to an alleged infringer to notify them of the alleged infringement and to give them a deadline to stop infringing. Often, the alleged infringer will comply voluntarily, and the issue is resolved without further action. However, if the cease and desist letter is ignored, it can be used in a lawsuit to demonstrate that the alleged infringer was aware of the infringement and continued in bad faith. This may lead to additional damages in a lawsuit.

A cease and desist letter is different from a cease and desist order, which is signed by a judge and has the force of law. To obtain an order, a lawsuit must be filed, and the order must be issued by a court.

In a trademark infringement claim, the plaintiff must prove ownership of a valid mark and that their rights are "senior" to the alleged infringer's. This means that if someone was using the mark before it was registered with the USPTO, they might be allowed to continue using it as they did before the registration was issued. However, this senior use may be restricted to its geographic area or specific goods or services.

When a plaintiff has a federal trademark registration on the Principal Register, it creates a legal presumption of the mark's validity, ownership, and the exclusive right to use the mark nationwide for the goods or services listed. These presumptions can be challenged in court.

Therefore, even if someone else is using a similar mark, they may not be infringing if their use predates the USPTO registration.

According to the USPTO, the key factors considered in most cases are the degree of similarity between the marks at issue and whether the parties' goods and/or services are sufficiently related that consumers are likely to assume (mistakenly) that they come from a common source. Other factors that courts typically consider include how and where the parties' goods or services are advertised, marketed, and sold; the purchasing conditions; the range of prospective purchasers of the goods or services; whether there is any evidence of actual confusion caused by the allegedly infringing mark; the defendant's intent in adopting its mark; and the strength of the plaintiff's mark.

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

an order that the defendant, in certain cases, pay the plaintiffs' attorneys' fees.

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.