Trademark Scammers. USPTO SCAM.

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Non-USPTO Solicitations

USPTO Scam

USPTO Scam

Here is yet another way scammers are trying to part you from your hard-earned money.

The USPTO recently announced that trademark holders are receiving letters in the mail requesting payment on fees due for the trademarks.

The fraudulent solicitations include offers such as: for legal services; for trademark monitoring services; to record trademarks with U.S. Customs and Border Protection; and to “register” trademarks in the company’s own private registry.

Furthermore, these scammers are using letterhead that mimics the look of official government documents and are using names that resemble the USPTO, such as “United States,” “U.S.,” “Trademark,” “Patent,” “Registration,” “Office,” or “Agency.”

Trademark Scam.

The Department of Justice reported that these scams resulted in the loss of approximately $1.66 million from copyright holders, and has only resulted in 5 convictions.

So, if you get a letter in the mail stating that it’s from the USPTO office read the letter carefully before making a decision about whether to respond.  According to the USPTO “All official correspondence will be from the “United States Patent and Trademark Office” in Alexandria, VA, and if by e-mail, specifically from the domain “@uspto.gov.”

What do you do if you are a victim?

File an online consumer complaint with the Federal Trade Commission (FTC). See here.

The USPTO has offered several examples of just some of the non-USPTO solicitations that have been mailed out, which can be reviewed here.

Until next time, I’m Attorney Francine Ward helping you protect what’s yours. Join my conversation on FacebookTwitter, or in one of my LinkedIn groupsGoogle+ Circles. Feel free to subscribe to my newsletter.

Post-registration Formalities

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Trademark. Trademarks.

Okay, so you have a trademark and you think that’s all you need ever do to keep that mark. Right? Wrong?

Did you know that in order for you to keep and protect your valuable trademark, there are certain things you absolutely must do? In the world of trademarks, we call them post-registration formalities. Among the actions you must take after you receive your trademark registration are:

  1. Use it. Use your trademark the way you said you were using it, when you filed Statement of Use
  2. Use it correctly. Make sure your trademark stands out.
  3. Use the appropriate trademark symbol correctly.
  4. Monitor your trademark. Make sure no one else is using your trademark without your permission.
  5. File Declaration Continued of Use. Between years 5-6, make sure you file this document. If you miss this deadline, your registration will automatically cancel, and no one will tell you.
  6. Renew your trademark. A trademark lasts forever, so long as you File Declaration Continued of Use. Between years 5-6, make sure you file this document. If you miss this deadline, your registration will automatically cancel, and no one will tell you.

“I didn’t know that! No one ever told me,” some of you may be saying. Well maybe that’s true, and maybe not. Sometimes clients don’t pay attention, and sometimes they don’t understand the importance of these steps. I know for myself, every time I register a trademark for a client I discuss how they should use the mark. Not only do I discuss the steps they should take, but give them a cheat sheet with explicit instructions.

Until next time, I’m attorney Francine Ward sharing useful legal information. Join my conversation on FacebookTwitter, or in one of my LinkedIn groupsGoogle+ Circles.

Comprehensive Trademark Search

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Trademark. Proof.

When trademarking your brand, it is vital to conduct a comprehensive trademark search to determine if the mark can be registered. Yet, as important as this step is, many folks avoid doing it. Why? One reason may be cost. The cost of investing in a trademark search is not cheap. It can range anywhere from $300-750, plus the cost of analysis (having a lawyer tell you what the voluminous search report actually means). But avoiding those costs on the front end can create greater costs on the backend.

If you don’t do a search and someone else is already using the same trademark, your application will likely be denied by the United States Patent & Trademark Office (USPTO). Their reason: your mark is likely to be confused with an existing registration or a pending application trademark.

When should you do a search?

When you are about to do any of the following, among other things:

  1. Start a business
  2. Build a brand
  3. Acquire a business
  4. Purchase Assets
  5. Purchase a Franchise
  6. License a trademark
  7. Collaborate with someone on a project involving content or brand creation.

Until next time, I’m attorney Francine Ward sharing useful legal information. Join my conversation on FacebookTwitter, or in one of my LinkedIn groupsGoogle+ Circles.

10 Was To Establish Your Brand

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Construction site crane building a blue 3D text. Part of a series.

When you think of great trademarks, the ones known throughout the world, they will likely include the apple with the bite taken out of it and the golden arches. There are also older trademarks that have withstood the test of time, like the classic Pepsi trademark or even the red tongue, which has come to represent the Rolling Stones for several decades now.

Big successful companies strategically use something called trademark placement or product placement, the conspicuous placement of the trademark where a large number of people will see it. Think of the giant television screen in New York’s Time Square. Other trademarks appear in popular movies and television shows.

The website brandsandfilms.com compiled a list of the top 40 product placements of all time. The top five are:

  1. Wilson in Cast Away
  2. Kodak Carousel in Mad Men
  3. Ford Mustang in Bullitt
  4. Manolo Blahnik in Sex and the City
  5. FedEx in Cast Away

To see the complete list, visit here.

Obviously, most businesses don’t have the power and resources to get their brand on television or the movies, but there is much a small business can do to promote its brand. And while your small business may not have its brand recognized around the world, you can become recognized as a top brand locally to the customers you want to specifically target.

According to Inc. Magazine, there are 10 ways to establish your brand.

  1. Publish Plenty of Free Content
  2. Make It Dead Simple to Access
  3. Provide Value on Social Media
  4. Guest Post on the Right Sites
  5. Tell Your Story
  6. Take Advantage of Google Authorship
  7. Write a Book
  8. Be Controversial
  9. Speak at Every Opportunity
  10. Be Constant

To see further details on these steps, read here.

Of course, a big part of establishing your brand involves the trademark of your logo and name. Why let someone else steal your brand and all the hard work you put into it? A solid trademark is a great way to protect not only your brand, but also your reputation with your customers.

Feel free to join my conversation on FacebookFacebook Esteemableacts Fan Page, or my Facebook Law Page, you can also interact with me on my Twitter Esteemable Acts pageTwitter Law Page, or on LinkedIn.

Trademark Infringement. PayPal. Energizer.

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Cause Confusion.

Many people think that in order to be in violation of trademark law you have to copy a trademarked work exactly down to the tee. This, of course, is not true. Creating something that looks very similar to a trademarked work that can “cause confusion” among the public is often enough to trigger a trademark infringement complaint or lawsuit, particularly if the product or service is in the same category.

trademark sign padlockPayPal, the giant global online payment company, recently filed a trademark complaint against an Indian company in the same field called Paytm. Yes, both names begin with the word Pay, but that’s not the only issue that sparked the complaint. PayPal points out that the India-based competitor also uses the same two-tone blue in their logo.

The complaint alleges that the Paytm logo can cause confusion among global users and that the company is attempting to coopt PayPal’s “global reputation and grow its user base.”

In another recent case, the battery company Energizer, has filed a trademark infringement lawsuit in a federal court in St. Louis against one of its competitors, Rayovac.

Energizer Brands alleges that Rayovac’s new packaging is “confusingly similar” to their own packaging, which has remained unchanged for years. The complaint accuses Rayovac of mimicking the color scheme and design of their battery packaging.

This Energizer lawsuit against Rayovac isn’t the first time they clashed with a competitor in regards to their trademarks. Earlier this year, Energizer sued competitor Duracell over placement of a pink bunny on their packaging, which Energizer claims is too similar to their registered trademarked pink Energizer bunny.

Trademark Infringement Definition.

The United States Patent And Trademark Office defines trademark infringement as follows:

Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.

As we see, confusion is the key. This confusion can manifest in many forms.  You must exercise due diligence when choosing words, phrases, designs and graphics, and even color schemes. And of course, if you have a trademark, be vigilant in protecting it.

Until next time, I’m Attorney Francine Ward helping you protect what’s yours. Join my conversation on FacebookTwitter, or in one of my LinkedIn groupsGoogle+ Circles. Feel free to subscribe to my newsletter.