Trademark Owners -- Stop and Think BEFORE You Pay

If you have a new TM registration chances are you may receive some very *interesting* notices - via regular mail or email. Some of these notices may at first glance appear to be from a governmental agency, others may quote or attempt to paraphrase trademark law.  The type of communications I am referring to have one major thing in common - they all include instructions as to how much, where and how to send your money. 

You can see a listing from the USPTO of Non-USPTO solicitations that may resemble official USPTO communications here:  http://www.uspto.gov/trademarks/solicitation_warnings.jsp

One interesting solicitation I have been receiving recently via email is the following:

•  Trademark Owner's Digest   
  
  The solicitation from Trademark Owner's Digest looks like this:
  
  
  
  It begins with "Congratulations! Your Trademark has been registered."  This immediately sets alarm bells ringing in my head, as coming from new York, I am naturally suspicious of being congratulated by anyone for anything.  Of course, it is entirely possible that Trademark Owner's Digest provides a very valuable service in exchange for the $980.00. 
  
  Trademark owners should be careful in responding to ANY solicitations pertaining to their trademark applications or registrations.   Know what you are getting in return before you send your money!

Dealing with cease-desist letters (Part One)

Here's another fun hypothetical, trademark fans!*

Let's say you've been doing business for a few years selling scented candles and you own the registered mark "MOOD" for those goods.  You're feeling pretty good - in a pretty good mood - because your candle sales are going well.  Then, one day, IT COMES.  In a certified envelope from the U.S. postal service (and usually nowadays with a copy by email): the CEASE-DESIST LETTER!

You open the letter and read it, and are astonished to learn that a company located in (let's just say) France claims that they have prior rights to the MOOD trademark.  Already, you have the feeling that this letter is going to ruin your day.

Reading further, you learn that the French company "owns registrations for the MOOD mark in the United States and thirty five countries worldwide" and " through such extensive use of the mark has established invaluable good will in the mark" and further that your use of the mark "is likely to cause consumer confusion" and is in violation of various trademark laws.

Finally you get to the part where the writer of the letter, usually an attorney for the French company, demands you cease all use of your mark and otherwise comply with the demands set forth in this letter within ten days, or else they will have no choice but to advise their client to take such legal actions as may be necessary to protect their rights to the MOOD trademark.  

It sounds very bad.  But before you panic, there are a couple of things you want to look at.  First, do they mention in the letter what sort of products or services the French company sells under its MOOD mark?  If not, and the mark is not famous like Coca-Cola or McDonald's, this should tweak your antennae.  If they mentioned their trademark registration numbers, go to the USPTO web site and look at their trademark registrations.  Sometimes what you will find may surprise you.  For instance in this hypothetical, suppose you went to the USPTO site and found that the French company did in fact own several registrations for the trademark MOOD, but the goods identified in all of these registrations are specially designed nuts and bolts for use in submarines.  In that case it looks like you can go ahead and make a sandwich and get on with your day.  Because owning MOOD for nuts and bolts used in submarines would not (at least on the planet I live on) give you the right to prevent another entity from selling scented candles under the MOOD mark.  But before you tuck into that sandwich make a note to yourself to call your trademark attorney after lunch to have them review the cease-desist letter, research the claims and respond to the sender.  If their claims are weak or highly questionable, a strong response pointing out the weakness of their claims is usually enough to send them packing. 

Alternately, in the event that the French company owns the MOOD mark for aromatherapy products, which arguably are related goods to scented candles, your TM attorney will be able to advise you how best to proceed to minimize problems.

This is NOT legal advice, of course, and the writings on this blog are provided solely for the amusement of the readers.  Consult your attorney before taking or omitting to take any action (except you may breathe prior to consulting your attorney).





*Actually there are no trademark fans, but I just wanted to say that. There are however, certain types of fans that are sold under registered trademarks.  So that is pretty cool. 

Dealing with USPTO Office Action Letters - confusing extraneous information

So you filed a trademark application without using a lawyer (oops!) and now you've received an "office action" from the USPTO.  At first when you read it, it may sound like a bunch of boiler plate, and that's because it is - at least, a good part of it. 

There are certain bits of prose that seem to find their way into a good many office actions that are probably intended to assist the trademark applicant in formulating a response - but often these pearls from the USPTO can be downright confusing to the uninitiated. 

One of my favorites is when the office action requires an amendment to the identification of goods or services, because the original listing as filed included something that was arguably ambiguous.  The examining attorney will often helpfully include a suggested amended ID of goods/services that would be acceptable to the USPTO, but following that helpful suggestion there is often a bunch of mumbo- jumbo about requirements for adding classes of goods and services, including requirements for specimens and filing bases.  This may be appropriate where the examining attorney's suggested amended ID of goods would necessitate adding classes to the application, but where the suggested amended ID would not lead to the addition of another class of goods, this information cannot be anything but confusing.

The take-away:   Read your office action carefully, and don't let extraneous information boggle your mind.  And of course, your best bet may be to call a TM attorney to prepare and file the response on your behalf.  We spend a good portion of our lives reading these things!