Trademarks

What is a trademark?

A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.

What is a trademark search, and do I need it?

In order to minimize expenses, solopreneurs often avoid hiring a trademark attorney to conduct a trademark availability search. Often relying on their own internet searches to vet the brand selected. Businesses that follow this process forgo the trademark availability search, which includes the federal trademark registry and each state trademark registry as well. A properly conducted trademark availability search will look for active trademarks and cancelled or abandoned marks. Additionally, the trademark availability search offers a limited search of the web for use of same and/or similar marks and a search of not only identical but phonetically equivalent marks. Its highly recommend that all businesses conduct a trademark availability search before proceeding with the filing of a trademark application.

Is the use of a trademark in commerce required for registration?

Under U.S. law, the actual use of a mark in commerce creates rights and priority over others. The rule for “ownership” of a mark starts with the “first to use”, not the “first to file”. Thus, if a trademark availability search was performed and it showed that the mark may be available, we recommend that you immediately start using the trademark to secure your priority of ownership over potential claimants.

Why is it essential to have an attorney assist in protecting your trademark in the U.S.?

Trademark disputes can occur during both the registration and enforcement periods. Our intellectual property lawyer will perform a comprehensive search to make sure the trademark you want to register is unique and won’t cause any dispute. We will clearly identify the goods and/or services to be associated with the mark and help you avoid registration errors and rejections that only lead to delays and added expenses.

What are the advantages of registering a trademark in the U.S.?

  • A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration (whereas a state registration only provides rights within the borders of that one state, and common law rights exist only for the specific area where the mark is used);
  • Public notice of your claim of ownership of the mark;
  • Listing in the USPTO’s online databases;
  • The ability to record the U.S. registration with U.S. Customs and Border Protection to prevent importation of infringing foreign goods;
  • The right to use the federal registration symbol “®”;
  • The ability to bring an action concerning the mark in federal court; and
  • The use of the U.S. registration as a basis to obtain registration in foreign countries

Is my trademark protected worldwide when I register it in the U.S.?

No! While in the U.S. ownership is based on the “first to use” system, most foreign jurisdictions follow the “first to file” system – meaning that outside of the United States you are encouraged to file your registration for your trademark as quickly as possible. The “first to file” system has made it easier for some manufacturers or potential distributors to file for trademark protection in bad faith with the sole intent of holding them for ransom from the real trademark owners. Thus, if you are or intend to expand operations such as manufacturing or commercializing your brand overseas, we highly recommended to preemptively file for trademark protection in those jurisdictions before proceeding with any initial contact or negotiation for said manufacturing or commercialization.

What is the correct use of the ®, TM, and SM denominations?

  • ® Registered mark symbol is a federal registration symbol reserved for registered marks, not pending, with the United States Patent and Trademark Office. Should be noted that it’s prohibited to use the ® before the actual certificate of registration is actually issued by United States Patent and Trademark Office.
    TM and SM are reserved for use by unregistered marks.
  • TM: is intended to be used on unregistered marks that identify PRODUCTS such as sodas, cereals, produce, and canned products.
  • SM: is intended to be used on unregistered marks that identify SERVICES such as those of restaurants, hotels, travel agencies, and import/export agencies, etc.

What is a Recordation with U.S. Customs and Border Protection?

What is a CBP Recordation?

Many companies mistakenly believe that registering a trademark or copyright with the U.S. Government provides the same protection and remedies as recording those materials with U.S. Customs and Border Protection (CBP). The processes achieve two different goals. The reason to register a trademark or copyright with the United States Patent and Trademark Office (USPTO) is to give the public notice of one’s ownership of the trademark or copyright. On the other hand, the purpose of recording a trademark or copyright with U.S. Customs is to partner with U.S. Customs to prevent the unauthorized importation of merchandise which bears a recorded trademark or copyright. U.S. Customs prevents counterfeit products from entering or exiting the United States (and included in transit goods) when registered trademark or copyright holders record their trademarks or copyrights with U.S. Customs.

Does CBP Take Recordations Seriously?

CBP takes Intellectual Property Rights (IPR) enforcement very seriously, in fact, it’s a priority. Shipments not destined for the U.S., that are merely in transit (for example from China for a brief stop in Miami to the ultimate destination in Latin America), are no exception. The fact that CBP enforces IPR rights for in transit merchandise surprises many — but lets face it, if CBP is to protect IPR rights, why should it stop at products solely destined for the U.S.?

When a trademark or copyright is recorded with U.S. Customs, infringing merchandise may easily be detected by U.S. Customs at all 328 official ports of entry across the country. Once a trademark or copyright is recorded with U.S. Customs, the owner’s information is entered into an electronic database accessible to over 60,000 U.S. Customs officers in the United States and overseas. U.S. Customs uses this information to target suspect shipments for the purpose of physically examining merchandise which ultimately prevents the importation or exportation of infringing goods. To make sure a trademark or copyright is properly recorded with U.S. Customs, consult with Diaz Trade Law. Diaz Trade Law is familiar with the process and familiar with teaching CBP how to look out for infringers.

What are the Advantages to Recording a Trademark or Copyright?

The most obvious advantage to recording a trademark or copyright with U.S. Customs, is that U.S. Customs will monitor and seize infringing merchandise at the ports of entry so that the trademark or copyright holder does not have to locate and prosecute every unauthorized importer, distributor, retailer illegally using its trademark or copyright.

U.S. Customs has the authority to issue monetary fines against anyone who facilitates the attempted introduction into the U.S. of seized and forfeited counterfeit merchandise. U.S. Customs may go to the U.S. Attorney’s Office and request that those involved in the illegal activity be criminally prosecuted under the Trademark Counterfeiting Act of 1984. First time violators of this Act are subject to penalties of up to ten years imprisonment and/or a $2,000,000 fine, while repeat offenders are subject to 20 years imprisonment and/or a fine up to $5,000,000.

Is it an Easy Process?

Trademark and copyright recordations may now be filed online with U.S. Customs’ new Intellectual Property Rights e-Recordation (IPRR) online system. CBP’s IPRR system allows holders of registered trademarks and copyrights to record their registration with CBP, so that CBP can police the borders for infringing goods. Once recorded, it is entered into an online search system named IPRS. CBP officers can be trained to identify and interdict counterfeit goods. Before logging on to record a trademark or copyright, a trademark or copyright holder should be extremely knowledgeable with the Customs regulations found in 19 CFR Part 133, and the specific questions that will be asked on the application. Otherwise, consult with Diaz Trade Law. Diaz Trade Law is already familiar with the process.

What are Grey Market Goods?

It is advisable to attempt to obtain “gray market” protection from U.S. Customs. “Gray market” goods are foreign-made articles bearing a genuine trademark or trade name identical with, or substantially indistinguishable from one owned and recorded by a citizen of the United States or a corporation or association created or organized within the United States, which are imported without the authorization of the U.S. holder.

What is the Benefit to my Company?

If you took the time to register your trademark or copyright with the U.S. Patent and Trademark Office then consider taking the extra step to record that trademark or copyright with CBP. Wouldn’t you want CBP to stop infringers, even if they are just passing through for a brief moment?

It is extremely beneficial for a company to record its registered trademark or copyright with U.S. Customs, as U.S. Customs may be a company’s greatest, and most cost effective ally when it comes to trademark and copyright enforcement.

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Why is Recording a Trademark with U.S. Customs and Border Protection Essential?

  • CBP recognizes the importance of intellectual property protection and provides assistance in stopping the infringing products at our borders.  CBP’s Intellectual Property Rights Recordation (“IPRR”) system allows holders of registered trademarks and copyrights to record their registration with CBP, so that CBP can police the borders for infringing goods.  Once recorded, it is entered into an online search system named IPRS.
  • Considering the incentives for counterfeiters along with the potential losses for intellectual property rights holders, companies that import merchandise must consider recordation a necessity. Importantly, when you record your marks, you must go to an expert in this area – as this is your opportunity to train CBP on the methods of policing your mark – and only trained experts can work on this proficiently, so you have the best results with CBP, like Hermes did. To learn more about the top four benefits of recording your intellectual property, review this article.