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This particular scam is the latest evolution in a series dating back to 2017, when a flood of trademark applications were filed at the USPTO with fraudulent specimens. Specimens, proof of the applicant’s use of a product or service in commerce, must be submitted before an application can proceed to registration. Bad actors would take an existing photograph of a product from online and digitally replace the existing trademark with the applied-for mark and submit that as a specimen. The USPTO feared that this practice could result in marks being registered that were not actually being used in commerce in the US, which could threaten the integrity of the US Trademark Register.
This led to a persistent game of Whac-a-Mole® between scammers and the USPTO, as the government implemented several security measures to try to defend against the fraudulent specimen issue, and then against other issues as they occurred. Nevertheless, new types of scams keep cropping up.
While these identity-verification methods may initially appear robust, the process of drafting an application itself leaves room for exploitation. When a filer reaches the “Attorney/Correspondence” section of an application, nothing actually prevents them from typing any name and bar number for the attorney. While examiners do check for attorney credentials during the application review process, this system is by no means infallible. The USPTO recently told ABA Journal that there have now been 30 documented cases of attorney names and credentials being listed on applications they did not file. One attorney, who has never practiced trademark law, had her name listed on over 2,300 applications!
These scammers impersonate U.S. attorneys in order to extract fees from unsuspecting clients and fraudulently file their trademark applications, but then disappear and allow the application to fall by the wayside. These scammers generally do not perform any sort of due diligence when filing the marks and the applications they file are often refused for some sort of deficiency or obvious conflicting mark. Applicants who expect to have an attorney who can handle such a refusal are then ghosted; these applications generally abandon due to failure to file a response.
The victims here are two-fold: the clients who waste time and money investing in a doomed trademark application filed with fraudulent credentials, and the attorneys whose names are attached to these slapdash applications.
Applicants seeking to avoid this situation should verify that their attorney is who they say they are. Make sure to check your attorney’s contact information online to ensure they are who they say they are. Be suspicious of unbelievably low filing fees for trademark applications; if it seems too good to be true, it often is.
Attorneys should perform regular trademark searches for applications listing you as attorney by searching AT:(("FIRST NAME LAST NAME"~2) OR ("LAST NAME, FIRST NAME"~2)). If you see marks you don’t recognize, report the issue to [email protected].
As is the case with scammers in many aspects of our lives, trademark scammers often attempt to solicit payments from trademark holders and attorneys alike by providing official-presenting information, frequently with some form of fabricated urgency. They hope that the recipient will accept the charge at face value and pay up to avoid these supposed risks to theirs or their clients’ trademarks. These impersonators often reach out to applicants via phone, email, and mail.
The genuine USPTO will never call you directly to request a fee of any kind. Even if your phone identifies the call as originating from the USPTO, if they’re asking for a fee, it’s not the trademark office.
This trick is called phone number spoofing, and it makes modern scammers particularly dangerous. The USPTO has put out some valuable guidance on this issue, noting that they will never call from a classic toll-free number like 800 or even the main “contact” number, as this number is only used to take calls as opposed to making them.
So be skeptical if you do receive a call from someone who claims they’re with the USPTO. Remember: if an attorney filed your application and is listed as your representative on your application, the USPTO is actually not even allowed to contact you! If someone “from the USPTO” contacts you as a represented applicant, make sure to tell your attorney right away.
If you did file your application without an attorney and you get a call from the USPTO, it’s a good idea to get the caller’s name and law office number and ask if you can call them back. Once you get off the phone, you can verify via the USPTO’s employee locator (https://portal.uspto.gov/EmployeeSearch/) whether that information is correct. If so, you can use the phone number listed for that employee on the website to contact them. Alternatively, you can call the Trademark Assistance Center at 1-800-786-9199 to confirm the employee’s identity. The examining attorneys at the USPTO are very aware of the trademark scams occurring right now, and will understand if you want to verify their identity before speaking with them.
One way to try to prevent future scam calls is to avoid putting any phone number on your trademark application, as this is not actually required. While scammers maystill try to reach out to you via phone even if your number is not listed on your application, leaving it off reduces the likelihood of it occurring.
Scammers may also pose as the USPTO via email. Many of these communications claim that a trademark holder hasn’t paid some part of their application or maintenance fee, or that a conflicting trademark has been found through a search and the trademark holder must pay a fee to resolve the issue. These emails can be dismaying to receive as a trademark holder, and sometimes even attorneys may brush past red flags when scammers roll out an official letterhead and 24-hour deadline.
If this happens, keep in mind: any emails from the USPTO will end in “@uspto.gov.” You will primarily only receive USPTO emails from 3 main email addresses, which are used to notify mark holders and attorneys of changes or updates to an application or registration: [email protected] for office actions requiring a response, and [email protected] and [email protected] for procedural status updates like Notices of Allowance, Notices of Publication, Registration, and Maintenance reminders.
If you are not represented by an attorney, you may also receive an email from a specific examining attorney asking for your authorization to make specific amendments to a specific application. Such emails will be from addresses containing an examiner’s first and last name and ending in uspto.gov. Any other emails purporting to be from the USPTO, and particularly any official-looking emails requesting fee payments, are likely scams.
Finally, last but not least, scammers often target trademark applicants and registrants via physical letters. These often are sent by entities with official sounding names which sound similar to the USPTO and will request additional payments to “publish” your application or “renew” your registered trademark.
If this happens, check over the letter carefully. Actual official correspondence relating to your trademark application will only come from the USPTO or the United States Patent and Trademark Office, which is based in Alexandria, Virginia. Variations on that name, such as Trademark Renewal Service or Patent and Trademark Bureau, are not legitimate. Scammer letters will also often include small misspellings of an office name, or will include fine print disclaimers indicating that they are not actually a federal agency.
You can also look up names of scammers and examples of misleading solicitations on the USPTO’s website at https://www.uspto.gov/trademarks/protect/examples-fraudulent-misleading-solicitations.
Remember, if you are represented by an attorney, make sure you tell them about any attempts that are made to contact you and talk to you about your trademark application so that they have all the information they need to keep you and your application protected.
Lloyd & Mousilli, a leading law firm specializing in intellectual property, technology and business law, is set to host a webinar titled "Don't Get Tricked: Unmasking the Most Common Trademark Scams," in collaboration with Alt Legal, a premier provider of IP docketing software. The event is scheduled for October 29, 2024, at 2:00 PM CT and will shed light on various fraudulent schemes targeting trademark applicants and their attorneys.
The webinar, sponsored by Alt Legal, aims to help participants recognize and navigate the increasing number of trademark scams, including fake email and phone solicitations that often deceive businesses and individuals seeking trademark protection. The discussion will focus on practical advice for avoiding these common pitfalls and the steps necessary to safeguard trademarks against such threats.
Rachael Dickson, Senior Trademark Counsel at Lloyd & Mousilli, will lead the presentation, drawing from her extensive experience in handling trademark law cases and protecting clients from fraudulent trademark practices. She will be joined by a panel of experts—Erik Pelton (Erik M. Pelton & Associates), Kayla Jimenez (US IP Attorneys), and Ana Vinueza (Commercial Counsel in Biotech)—who will share insights and best practices to equip trademark attorneys with the knowledge to protect themselves and their clients from fraud.
""While these types of trademark scams have existed for years, they've clearly gotten worse in recent months. Thousands of applications have been fraudulently filed at the USPTO using stolen attorney credentials! Applicants are also being constantly inundated with faux threats to their trademarks and faked invoices for unnecessary services. This event is designed to raise awareness of these scams and provide applicants and attorneys with the tools to spot and combat them," says Rachael Dickson.
To register for the event, visit https://www.bigmarker.com/alt-legal/Don-t-Get-Tricked. The webinar is recorded and all registrants will receive a link to the replay.
Lloyd & Mousilli is a boutique law firm specializing in intellectual property, technology law and related litigation. From its founding over a decade ago, headquartered in Houston, Texas, Lloyd & Mousilli has championed the strategic use of intellectual property, counseling businesses from new startups to enterprises.
Alt Legal is an innovative IP docketing solution focused on making trademark professionals’ lives easier. Driving automation across all phases of the trademark lifecycle, Alt Legal has direct connections to the USPTO and CIPO and integrates other data to provide global trademark docketing coverage. Thousands of IP professionals benefit from their one-click reporting, smart email templates, personalized email reports, calendar sync, TEAS integration, collaboration tools, and Alt Legal Trademark Protection monitoring service.
The term “VTuber” originated from early forays into a new form of content creation, “virtual YouTubing,” in the mid-2010s as media companies and individuals alike discovered the initial popularity of content based around a talent piloting a digital model of themselves in videos and livestreams. One of the first major hits in this space was Kizuna AI, which featured a Japanese actress who produced short skits on YouTube behind a 3D motion-tracked anime-style model for the company Activ8.
While corporate-sponsored VTubers today frequently use motion capture suits like those employed for realistic videogame character animation, many VTubers pilot their models using just VR headsets and some additional trackers on their bodies. However, the most common method of VTubing uses a 2D model tracked via an iPhone’s IR cameras.
As the name suggests, VTuber content was initially primarily distributed via YouTube. However, after interest in VTubing skyrocketed during the COVID-19 lockdown, streaming services like Twitch and BiliBili (based in China) became hotspots for these talents as well. Advances in 2D and 3D motion tracking technology, compounded by artists and model riggers developing their skills in tandem, have led to a vast and growing content-creation subsector of virtual entertainers. These VTubers can amass tens of thousands, hundreds of thousands, and sometimes millions of followers with their highly detailed and realistically moving anime-style avatars.
While indie VTubers operating on their own can choose to livestream content of their choice either individually or in collaboration with others as they like, “corpo” VTubers affiliated with VTuber agencies are sometimes only allowed to collaborate with other VTubers from the same agency. “Corpo” VTubers may also be subject to restrictions on the kinds of games they can play or topics they can discuss.
VTubers can monetize their content in a variety of ways, including through advertising, sponsorships, subscriptions, memberships, tipping, and virtual events. Some also sell merch featuring their avatars, which can include stickers, posters, clothes, plush toys, CDs, digital backgrounds, and more.
Larger agencies such as Hololive and Nijisanji sometimes represent hundreds of virtual content-creating talents. Such companies generally retain ownership of all aspects of the VTuber’s brand, as each persona and its associated branding are developed entirely in-house. However, agencies differ in their approach to what they register as a trademark and in which jurisdictions.
Hololive, for example, holds a massive trademark portfolio of 144 registered or pending trademarks in its home country of Japan and 153 registered or pending trademarks through the World Intellectual Property Organization (WIPO). Their WIPO marks cover 37 international jurisdictions, including 44 marks at the USPTO. These trademarks include the names of agency branches (e.g., Hololive English, Hololive Indonesia), logo variations, VTuber groups termed “generations” (e.g., Hololive Myth, Tempus), and even individual VTuber names (e.g., Gawr Gura, Mori Calliope). Hololive’s push on its international branding comes alongside massive success in international markets, notably showcased in a recent collaboration with Dodger Stadium.
In contrast, Nijisanji’s trademark portfolio is heavily Japan-centered despite a sizeable English-speaking talent roster for the North American market, comprising 43 marks in Japan and 9 filed internationally via WIPO, with only 1 filed at the USPTO for the English-speaking subgroup XSOLEIL.
Comparison of the two companies’ talents and US trademark portfolios:
Smaller, yet still exceptionally popular “corpo” agencies like VShojo often operate on an entirely different business model that recruits talents from an existing pool of indie VTubers, allowing them to keep rights to their branding while simultaneously providing the advertising, sponsorships, and support of a talent agency. VShojo’s trademark portfolio therefore only consists of 3 registered marks at the USPTO for its name, logo, and icon. While the agency and its attorneys assist in enforcement of the talents’ brands, the ownership breakdown leads to the talents following a similar trademark registration strategy to that of indie VTubers.
Indie VTubers often have follower counts rivaling and, in some cases, exceeding that of “corpo” VTubers. However, some of the largest players in the indie Vtuber space, like Ironmouse, Shylily, Filian, and Shxtou (a.k.a. Shoto) do not appear to have any trademark registrations or applications for their names at the USPTO.
This lack of trademark activity may be due to concerns surrounding privacy and costs. Whether an indie VTuber has two million or two thousand followers, a perennial concern of content creation based around an anonymous avatar is anonymity. Most countries’ trademark databases have publicly searchable ownership records. While listing limited liability companies as application owners can provide some privacy, LLC ownership can still generally be traced back to identifying information through government filings. The cost of government filing fees and attorney fees may also be a significant factor to many VTubers. Just as with YouTube, it can take a while for a Vtuber to build up a solid following and income; the cost of hiring a lawyer to register your brand as a trademark may feel daunting.
However, there are ways to alleviate privacy and cost concerns. Stay tuned for more information on this in a future post.
Here’s a hint. All of these words WERE federally registered trademarks at one point, but only eight of them still have active trademark registrations (you can find the full answer to this at the bottom of the post).
What’s going on here? Sometimes, when a company’s product becomes extremely popular and dominates its industry, consumers begin to use the product’s trademark as a generic term for the product itself. This can give a trademark owner an aspirin-worthy headache, as they can lose their legal rights to the trademark itself if generic use of the trademark becomes common enough. Nobody wants their trademark rights to be thrown in a dumpster!
Trademarks are intended to distinguish and identify a *single* source of goods; if that term is being used by consumers to refer to any products of that type, then it’s clear as cellophane that it’s no longer being used as a trademark. This makes the trademark registration vulnerable to a cancellation action at the Trademark Trial and Appeal Board on the basis of its loss of source-identifying ability. If a trademark registration ceases to be a trademark due to widespread generic use, it’s considered the victim of “genericide.” This has happened in the past with trademarks such as Escalator, Trampoline, and Dumpster.
Trademark Owners can reduce the risk of their trademarks taking an escalator ride down in source indicating value in a number of ways:
First, trademark owners can avoid using their marks in a generic manner. Instead of referring to their products as a noun (“Kleenex”) or a verb (“Go Xerox this document”), they can use their product names as adjectives and include the registered trademark symbol (“Kleenex® tissue” and “Xerox® copier”). Many trademark owners take this further by adding “brand” after their trademark as well. Johnson & Johnson, the owners of the Band-Aid trademark, changed the words of its 1975 jingle “I’m stuck on Band-Aid” to “I’m stuck on Band-Aid® brand” in the 90s.
Second, trademark owners can educate the public as to the appropriate use of their trademarks. Velcro IP Holdings, the owner of the Velcro trademark, did this humorously back in 2017 when they released a “We are the World” style video called “Don’t Say Velcro,” which told customers “if you call it ‘Velcro,’ we're gonna lose that circled ‘R.’” Kleenex also played with this concept in an Instagram post stating “The lawyers of Kleenex thank you for saying Kleenex® Brand Tissue.”
Finally, trademark owners must enforce their trademark rights against others using their trademarks generically. Google has done this by challenging internet domain names incorporating the word “google” in them as a form of cybersquatting and objecting to the Swedish Language Council’s addition of the word “ogooglebar” (meaning “ungoogleable”) to its lexicon.
All of the above actions can help a trademark owner keep their trademark flying high as a Frisbee branded flying saucer!
Having a great trademark team can help too. Reach out to Lloyd & Mousilli if you need help.
All the marks on Lines 2 and 4 are still federally registered trademarks.
All the marks on Lines 1 and 3 were federally registered trademarks that have since lost their trademark protection due to genericide.
Fun fact: There’s so much confusion around what “generically” used trademarks are still registered that several lists online are incorrect! I had to double check each one of these on the trademark register to ensure these answers were all correct. Wherever there is a live trademark registration still connected to the term, I’ve linked to the record.
A Uniform Domain Name Dispute Resolution Policy (UDRP) is a process used to resolve disputes over domain names, often involving claims of cybersquatting, where a domain name may infringe on trademarks. If you receive a UDRP complaint or a cybersquatting claim, it's essential to understand your rights and options. As the domain name holder, you have the opportunity to defend your registration by providing evidence and arguments that demonstrate your legitimate interest in the domain name and prove that it was not registered in bad faith.
Lloyd & Mousilli, a boutique law firm specializing in IP litigation, offers expert guidance to help you navigate this complex process. Our experienced IP team will support you through every step, from preparing a robust defense to presenting your case before the arbitration panel. With our deep understanding of UDRP proceedings and a commitment to protecting your online assets, we ensure your interests are vigorously defended.
Lloyd & Mousilli's IP practice features seasoned legal counsel with hands-on experience in IP litigation. In addition to their impressive backgrounds at companies like Apple, Dell, and the USPTO, the team has successfully defended against UDRP complaints from major software enterprise companies. The Lloyd & Mousilli team stands out by focusing on securing strategic protection in a cost-effective manner.
Lloyd & Mousilli is a boutique law firm specializing in intellectual property, technology law, and related litigation. Since its founding over a decade ago, headquartered in Houston, Texas, Lloyd & Mousilli has been dedicated to the strategic use of intellectual property, providing counsel to businesses ranging from startups to large enterprises.
Did you know that SUPER HERO has been a registered trademark for “masquerade costumes” since 1967?
Under US trademark law, you’re not supposed to be able to get trademark protections for generic terms that name a type of product. Merriam-Webster Dictionary defines “Superhero” as “a fictional hero having extraordinary or superhuman powers.” Every costume store out there has a “superhero” section, and consumers clearly perceive the term as referring to a type of character. So all in all, the existence of this registration doesn’t really make any sense.
It appears that even the USPTO itself doesn’t recognize “Superhero” as a registered trademark. Although the trademark office bars the inclusion of a third-party registered mark in a trademark registration’s identification of goods/services, a quick search of the trademark register indicates that there are several trademarks registered with costumes or costume-related goods with “superhero” in the identification.
For example, Reg. No. 5436451 OPPOSITE OF FEAR is registered with “Costumes for use in children's dress-up play or role-playing games, namely, superhero themed and animal themed costumes” in Class 25 and “Toy and novelty masks and costuming accessories in the nature of . . . novelty superhero equipment, namely, masks, headbands, and eyepatches” in Class 28.
What’s even weirder about the SUPER HERO registration is that it is jointly owned by Marvel Characters AND DC Comics – noted long-time competitors in the superhero comic, costume, and film business. A trademark fundamentally identifies a single source of goods/services; competitors simply cannot jointly own a trademark, as that would defeat the entire point of even having it. If two such different and competitive companies such as Marvel and DC “jointly” own a trademark for SUPER HERO, that indicates that consumers cannot possibly view SUPER HERO as being a single source indicator for either of them. This only further supports the conclusion that consumers view SUPER HERO as a generic term referring to characters, stories, and related products in the superhero genre.
Astoundingly, Marvel and DC also jointly own:
SUPER HEROES for Class 28: “Toy figures” (registered since 1980)
SUPER HEROES for Class 16: “PUBLICATIONS, PARTICULARLY COMIC BOOKS AND MAGAZINES AND STORIES IN ILLUSTRATED FORM” (registered since 1981)
SUPER HEROES for Class 25: “t-shirts” (registered since 2009)
Incredibly, all of these marks were registered on the principal register without even a 2(f) acquired distinctiveness statement, which is usually required for descriptive marks to register on the Principal US Register. Such a statement declares that the descriptive mark has gained secondary meaning and has become well-known enough that consumers recognize it as a source indicator. The absence of any 2(f) statement on any of the SUPER HERO/ES marks indicates that the USPTO never treated these marks as descriptive. Given the undoubted genericness of the word, this is as unbelievable as most 60s supervillains’ schemes!
How did this happen? Unfortunately, trademark prosecution records are limited for marks which were registered prior to 1984, so we don’t know for sure. Although we can easily see the registration certificates issued in the 1967, 1980, and 1981 SUPER HERO/ES trademarks, we can’t tell just by looking at the US Trademark Register records whether the USPTO ever issued any refusals against the marks before ultimately registering them. The only refusal ever issued in the registration for “t-shirts” related to the merely ornamental presentation of the term on a specimen submission, which the applicant easily overcame.
Regardless of how these trademarks ever registered, the validity of these trademark registrations is now being challenged at the Trademark Trial and Appeal Board by Superbabies Limited, which filed a Petition for Cancellation against the marks based on their genericness and abandonment back on May 14, 2024.
The petition used the registrants’ own creative works against them, stating “DC and Marvel’s strategy is ripped straight from their own supervillains’ playbook,” and including excerpts of storylines relating to use of legal mechanisms to shut down heroic work from Fantastic Four, Ultimate Spider-Man, Batman, and Justice League of America comics. It also includes such mic-drop worthy lines as “It is time for DC and Marvel’s villainous reign to end. SUPER HEROES belong to the people—they do not belong to Marvel or DC, just as they do not belong to Dr. Doom, Kingpin, or the Joker.”
This cancellation is itself an effort to fight DC Comics’ own attempts to shut down Superbabies’s work. In one TTAB opposition action filed April 04, 2024, DC strongly implied that due to its family of “Super” marks, it had the exclusive right to use “the prefix SUPER followed by a generic term for a human being or group of human beings of various ages.”
Although Marvel and DC Comics filed a notice of appearance and a motion to extend their time to answer to July 24, they have yet to file an answer. Thus, on August 09, Superbabies filed a motion for default judgment canceling the marks.
After 60 years of protecting these marks, why are DC and Marvel giving up now? It’s possible that news articles and commentary covering the cancellation effort persuaded them it was better to let the case go than risk further negative publicity. The rise of social media has led to media companies generally being far more sensitive to public outcry than in the past, which in many cases has resulted in a less litigious and more tolerant approach to their intellectual property rights. This can be most clearly seen in the example of Disney, which used to be known as a fierce protector of its IP; however, in recent years, Disney has been far more lenient towards fan-made works and tributes.
Regardless, it appears that Marvel and DC’s “villainous reign” of trademark control of SUPER HERO will soon to come to an end.
1 https://ttabvue.uspto.gov/ttabvue/v?pno=92085201&pty=CAN&eno=1
2 https://ttabvue.uspto.gov/ttabvue/v?pno=92085201&pty=CAN&eno=7
Lloyd & Mousilli, Attorneys & Counselors at Law
For Immediate Release
Houston, TX - June 9, 2024 - There are countless trademark service providers available and seemingly attractive if further due diligence is not conducted. A quick search for “file trademark application” will yield sponsored advertisements for online providers aiming to provide a quick and easy, budget friendly experience for a “DIY” suite of trademark filings. Unfortunately, what is marketed is often not the best choice for a startup aiming to be optimized for long term growth and attractiveness to investors.
Strategic, attorney led trademark applications can still be an efficient process. As a boutique law firm specialized in intellectual property, technology law & related litigation - Lloyd & Mousilli's trademark practice was built with startups in mind.
Lloyd & Mousilli's trademark practice consists of experienced legal counsel with real world experience in startups and small business. While their resumes are stacked with prominent experience at companies like Apple and Dell, as well as the USPTO itself - deserving equal attention is that they are small business owners themselves. Trademark strategies for startups and small businesses are not the same as an enterprise approach and there is no one size fits all solution. Focusing on obtaining strategic protection in a cost effective manner sets the Lloyd & Mousilli team apart.
From the clearance search before your brand launches to enforcing your trademark registration in court - Lloyd & Mousilli specializes in supporting startups through the entire IP life cycle.
Lloyd & Mousilli is a boutique law firm specializing in intellectual property, technology law and related litigation. From its founding over a decade ago, headquartered in Houston, Texas, Lloyd & Mousilli has championed the strategic use of intellectual property, counseling businesses from new startups to enterprises.
Trademark scammers often use official-sounding names and government data to trick you into believing they are affiliated with the United States Patent and Trademark Office (“UPTSO”). Once your trademark application is filed, you may find yourself flooded with phone calls or texts from fake Trademark officials and official-looking offers and notices from private companies posing as government agencies.
To avoid being scammed by these illegitimate agencies, be cautious of any solicitation from phone numbers you don’t recognize and entities like "Trademark Compliance Center" or "Patent and Trademark Bureau." These solicitations often contain accurate information about upcoming deadlines, but their true purpose is to deceive you into paying for their unnecessary services or fees.
Another common scam involves offers to renew your trademark registration for an unreasonable fee. While it's true that trademarks must be periodically renewed to remain active, these scammers often send notices months or even years before the actual deadline. They may also charge fees that are much higher than the official USPTO renewal fees.
If you have questions about whether the renewal notice is legitimate or a scam, check the USPTO database using your serial number for outgoing letters and contact your attorney if you are unsure of any upcoming deadlines, required actions or unexpected bills or fees.
In addition, trademark scammers may offer to record your trademark in a private registry but, these registries have no legal significance and provide no additional protection for your trademark. While companies offering legal services, like assistance with filings or responding to office actions, may be legitimate, they may also be fraudulent. Therefore, you must check to ensure the company is affiliated with a licensed U.S. attorney and has a valid bar number.
To safeguard your trademark and avoid these trademark scams, always be cautious of unsolicited offers, notices and extra “required” payments. Remember that all official correspondence from the USPTO will come from the "United States Patent and Trademark Office" in Alexandria, Virginia and will normally come from an email (usually [email protected]). All emails will be from the "@uspto.gov" domain. If you receive a suspicious offer, contact the USPTO’s Trademark Assistance Center directly at 800-786-9199 (press 1) or set up a consultation with Lloyd & Mousilli so that we can protect your intellectual property from falling prey to the hands of trademark scammers. Remember, NEVER pay any money after your trademark application is filed until you check that it is legitimate.
The journey of getting a trademark registration for your brand seems straightforward—think of a name, design a unique logo or phrase, file a trademark application, and voila, your brand is protected. However, this simplified timeline overlooks the potential minefield of intellectual property rights that could send your business into costly legal battles and damage your brand's integrity. Conducting thorough trademark searches before filing can help you avoid these risks by ensuring your proposed trademark isn't infringing on existing rights. This due diligence is not just a precaution; it's an essential step in building a resilient brand identity.
One of the primary reasons trademark applications are rejected by the US Patent and Trademark Office is because they are too similar to an already registered trademark. Identifying any similar trademarks before submitting your application can save your business time and money by ensuring your trademark does not infringe on the rights of another business.
Now imagine a worst-case-scenario where you launch a brand, invest in marketing, and establish a customer base only to receive a cease-and-desist letter for unintentional trademark infringement. The consequences can range from rebranding to compensation for damages—a scenario that could be financially and reputationally catastrophic. Thorough trademark searches act as a shield, protecting your venture from such threats.
If you can’t hire an experienced trademark attorney, you need to protect yourself by searching for similar trademarks yourself. The effectiveness of your trademark search hinges on the resources you utilize. While many free tools offer basic search capabilities, they may not provide the comprehensive coverage necessary to uncover all potential conflicts. In your search, narrow your focus to trademarks that are confusingly similar to yours when used with goods and services that are the same as or related to yours. Here are some resources recommended for a thorough investigation:
1. United States Patent and Trademark Office (USPTO) Database: The USPTO's online database is a starting point for any trademark search. It allows you to search registered trademarks and pending applications, offering a glimpse into potential conflicts within the U.S.
2. Trademark Official Gazette (TMOG): The TMOG is a weekly publication by the USPTO that features all trademarks that received approval for registration in the USPTO database.
3. International Trademark Databases: If your business plans to expand globally, searching international databases like WIPO's Global Brand Database, the European Union Intellectual Property Office (EUIPO) database, TMview, and Madrid Monitor is crucial.
4. The Internet: Common law rights are established once a business begins utilizing a trademark in intrastate commerce associated with specific goods or services. These rights are confined to the state in which the trademark is used but can affect the rights provided by your trademark registration if another party’s common-law use predates the use supporting your application. Searching the internet for potential uses of your trademark or a similar trademark can prevent infringement of common law rights.
5. Specialized Search Services: For a more thorough investigation, consider using specialized search services. These services can provide detailed reports on potential conflicts, including similarities in sound, appearance, and commercial impression, which might not be apparent through a basic search. Be aware though, these commercial search services provide broad results, and many of the trademarks listed may actually not be a bar to your mark. An experienced trademark attorney can help you parse the results.
A well-conducted trademark search is the foundation upon which a legally sound trademark strategy is built. This strategy should consider the distinctiveness of your trademark, potential market expansions, and the evolving landscape of intellectual property rights. Engaging with legal professionals who specialize in trademark law can provide valuable insights and guidance through this complex process. Lloyd & Mousilli and our unparalleled team of legal professionals with years of experience and deep expertise in trademark law stand ready to ensure your trademark is protected and legally complaint.
The process of obtaining a trademark from the United States Patent and Trademark Office (USPTO) can be complex and time-consuming. For applicants looking for a faster review process, the USPTO offers an expedited review option for trademark applications. It typically takes about 2 to 3 months from the time of filing (as opposed to the standard 8-12 months) to the issuance of a trademark registration, assuming there are no significant issues or objections.
To take advantage of the expedited review process offered by the USPTO for trademark applications, you'll need to meet certain eligibility requirements. Generally, the expedited review option is available for applicants who can demonstrate a genuine need for expedited consideration. This may include situations where there is an imminent risk of trademark infringement or a need to enforce rights in court.
Additionally, applicants must meet other general requirements for registration, such as providing a complete and accurate application, meeting all statutory requirements, and paying the appropriate fees.
In order to request an expedited examination for your application, you need to submit a Petition to Make Special to the USPTO after filing your application but before the commencement of the initial examination process. Your petition should include:
Deciding whether to file a Petition to Make Special should involve careful consideration and informed judgment. Points you should first consider include, but are not limited to:
If you are unsure of your eligibility or need assistance with filing, Lloyd & Mousilli can advise you on the best course of action.
The metaverse is essentially an immersive experience that integrates the virtual world and reality, allowing users to interact with one another even if they are not physically in the same space. People can work, shop, and socialize in the metaverse the same way they do in real life. This inevitably translates to a digital economy; users can sell and purchase virtual products, like clothes and real estate, that only exist in the metaverse.
Major brands are preparing to enter the metaverse by trademarking their logos and products.
Your intellectual property is valuable and should be protected- both physically and virtually. Creators are already taking advantage of the unprecedented circumstances created by the introduction of the metaverse. For example, third-parties filed two trademark applications last year to use Prada and Gucci logos on “downloadable virtual goods” on metaverse platforms. The third parties are unaffiliated with the real Prada and Gucci, but their attempt to capitalize on major brands in the metaverse marketplace is an indication of what is to come.
Shielding your brand’s name and image in the virtual world is crucial. Lloyd & Mousilli can guide you through the complexities of obtaining a trademark for use in the metaverse to ensure you are afforded the protection your brand is entitled to.
Fraudulent use of your intellectual property by unaffiliated third parties can be detrimental to your brand’s image. The last thing you want is your customers being exposed to confusingly similar products being sold by infringers. A trademark will legally protect your brand in the event that your products or intellectual property are infringed upon. Even if your brand has already obtained trademark registrations for the “real world,” you should consider filing separate applications for those existing trademarks that cover distinct virtual goods and services. This will ensure that such rights are recognized and protected in the metaverse virtual marketplace.
The first course of action to enforce a trademark is typically to send a cease and desist letter to the infringer. If this is unsuccessful in stopping the infringement, the next step is to file a lawsuit. Trademarking in the metaverse is a relatively new concept so it is still too early to say exactly how trademark enforcement in the virtual world will unfold, but the general process of stopping an infringer will be the same. Lloyd & Mousilli is prepared to preserve the integrity of your brand by counseling you in the event of trademark infringement.
Filing a trademark application for your brand is the first step. Lloyd & Mousilli's trademark attorneys understand the complexities of intellectual property, as well as the intersection of technology and law. Book a consultation to discuss more in depth about the trademark process as it pertains to the metaverse.
Injunctive Relief is a court-ordered act or prohibition against an act that has been requested in a petition to the court for an injunction. Usually, injunctive relief is granted only after a hearing at which both sides have an opportunity to present testimony and legal arguments (NOLO, n.d.).
A Temporary Restraining Order is a court order that prevents someone from committing a certain action endorsed by the court. This type of order has a specified time limit and does not exceed 14 days, unless the court sets a time before that date.
A Permanent Injunction is a court order that a person or entity take certain actions or refrain from certain activities. A permanent injunction is typically issued once a lawsuit over the underlying activity is resolved, as distinguished from a preliminary injunction, which is issued while the lawsuit is pending (NOLO, n.d.). Injunctions are decisions made by the court commanding or preventing a specific act. This is useful in Intellectual Property disputes when parties are arguing over ideas and intellectual rights owned by one of the parties.
When there is a patent, copyright, or trademark owned by a party, that party can prove to the court that they own that property protected by the law. With this document stating they own the rights to the specific property, they are able to request a permanent injunction from the court to prevent another party from using their property.
For example, if you owned a trademark for the company name “Amazing Star”, and you noticed that a store opened with the name “Amazing Star” across the street from your business then they would be infringing on your entity’s trademark. In order to receive injunctive relief from the court, you will need to provide the trademark declaration to the court for proof of ownership.
First, you must decide if your case should be heard in State or Federal Court. This can be deciphered by determining the questions or diversity involved in your case. Inter-state issues should be filed in Federal Court, whereas issues that are within state jurisdictions should be filed in state courts.
Once you have decided if the case should be filed in State or Federal Court, it would be beneficial to decide which court you would like to petition to hear the case. This is a crucial step to ensure that the judge you decide to request a hearing from is willing to hear – and potentially grant your case.
To begin your request to the court, you would likely want to start with the complaint. This is beneficial to the judge overseeing the case because it will give the judge an idea of what to expect during the hearings and the duration of the trial. You should be as descriptive as possible in your complaint, but not excessive. This complaint will be attached to the petition that is filed with the court.
Before you submit your petition to the court, you want to ensure that you have reviewed the local rules of the court. This will help to have a better understanding of how the process would go moving forward in the case. Most courts post their local rules on their respective websites. These rules are usually issued by the presiding judge and abided by their associates.
Once you have reviewed all the facts needed and verified that you have included all necessary points, you can proceed with filing with the court. After reviewing all the rules associated with the court, you can adjust accordingly for a likely outcome. (American Bar Association, n.d.).
A Preliminary Injunctive Relief can benefit the Plaintiff in an Intellectual Property Dispute by bringing the seriousness of the damages to the court’s attention. This is most useful when there are other parties involved that seek to steal or misuse property that would otherwise cause the Plaintiff’s company harm. A Preliminary Injunction MUST show that the Plaintiff will suffer irreparable harm unless the injunction is granted.
If your request for a preliminary injunction is denied by the court, and sufficient evidence has been provided, the party requesting the preliminary injunction may file and interlocutory appeal (an appeal that occurs before the trial court’s final ruling on the entire case). There are three reasons that must be met in order to complete an interlocutory appeal. First, the order must have conclusively determined the disputed question. Second, the order must “resolve an issue completely separate from the merits of the action. Finally, the order must be “effectively unreviewable on appeal from a final judgment.” (Cornell Law School, n.d.)
This may seem like a lot of information, but there are resources out there to help with the questions you have. Selecting the best attorney that suits your needs and has the experience you need to get this case through is a hard task. At Lloyd & Mousilli, we are here to help get you through the difficult times and strive to get you the best outcome for you and your company. L&M offers a free 15-minute consultation to answer your questions about this topic.
While driving down the road, you might recognize that a McDonald’s is approaching your line of sight by identifying the infamous “golden arches” at the forefront of your dashboard. With this iconic symbol pinned at nearly every intersection, it is difficult not to recognize the fact that McDonald’s has some pretty serious brand establishment.
It is no easy feat to accomplish this type of remunerative stature, however, the process of protecting a brand’s identity is a great way to start. Submitting a trademark application is one of the first things a business can do to establish an economic profile and jump start a brand’s identity.
The word “trademark” can refer to both trademarks and service marks. The United States Patent and Trademark Office (USPTO) defines a trademark as a word, phrase, symbol, design or a combination of any of the aforementioned that defines goods or services. This is how consumers are likely able to identify a brand from other potential competitors and can also protect a business from its economic rivalries.
With that said, any business entity or individual can apply for a trademark. It is an essential part of protecting a company’s intellectual property and can emphasize the marketability of a business.
During the process of filing a trademark application, the mark will be evaluated as to whether it is registrable, and how difficult it will be to protect. After this has been determined, the application will be submitted to the USPTO for review and approval.
From this point forward, the proposed mark will live in the Trademark Electronic Search System (TESS) while awaiting review. TESS is a trademark database that allows anyone in the world to search for trademarks that have been registered or applied for in the United States. This platform is used to show the public what trademarks are currently awaiting registration, and which of those already have a registered status. This also give entities a closer look into the current climate of what companies are looking to register as their own mark.
Such as any publicly searchable database, TESS provides a great deal of public exposure to pending trademark applications, which can be a huge topic of concern for high-profile companies. Big fish brands have to go through the same process of filing a trademark application just like any other business, so a considerable amount of time, strategy and analysis goes into selecting the best course of action for submitting a trademark.
Recently, companies have gotten more sophisticated with how they approach submitting their trademark applications. With society’s ever-growing concern for the next big product, it has become harder and harder for brands to mask their newest creations inside the world of the internet, thus requiring concealment. The most recent example of a successful trademark concealment can be found in Apple’s latest addition to their tech roster, the iPhone 14.
September 16, 2022 marked the release of the new and improved iPhone 14, with some pretty distinctive upgrades. Most notably, what was once was a thick black indent on the top of the screen is now an interactive touch bar titled the Dynamic Island. This new upgrade allows the user to engage with the screen in a multitude of variations that are not privy to older iPhone generations.
Apple is no stranger to trademarks, so it can be assumed that their strategy on filing certain trademark applications is razor sharp. The submission of the Dynamic Island trademark was kept well under wraps without an inkling of potential for pre-exposure, and many ask how this was possible given the highly anticipated launch of the tech giant’s newest addition to the iPhone dynasty.
This concept of concealing trademark applications to prevent pre-exposure has become an increasingly used tactic amongst many big named brands. TESLA is another example of a very established company that utilizes this tactic to conceal their latest and greatest trademark. Other companies use this approach to prevent competitors from searching for technology gold.
With that, there are certain strategies you can implement into a trademark application to prevent the general public from viewing and potentially replicating a mark. Trademark concealment is most commonly utilized when a brand wants anonymity during the process of waiting for a trademark registration, which has consistently been met with success. This is accompanied by using foreign priority rights to keep the trademark filing a secret.
Section 44(d) of the Trademark Act has allowed companies to jump over the hurdle of having their trademark applications displayed in the Trademark Electronic Search System by filing their trademark application in a foreign country such as Jamaica, or in any other country that does not have an online database viewable to the public. If someone wanted to view the recent trademark applications in Jamaica, they would need to go the physical Jamaican trademark office. This provides an extra layer of effort and determination for scouters to cross through in attempting to leak a mark.
Now, subject to scrutiny and public opinion, this loophole does not have a very long shelf-life. If a company intends on having their mark registered with the United States Patent and Trademark Office, it is required that trademark applicants file with the U.S. claiming priority to the trademark within 6-months of filing the foreign application. Given the fact that the majority of brands use this tactic to prepare for the release of major products, the concern of the concealment lifespan is marginal to most.
Section 44(d) gives companies practically 6-months of secrecy to prepare for any necessary actions before the trademark is officially released as public record in the U.S. Whether that be a media event or a soft social media launch, it is imperative to a business that their secrets remain well hidden- and rightfully so.
This is an extremely useful way for brands to maintain the integrity of their most prized trademark applications, and a beneficial tool to utilize when there is concern over competitor poaching. If this alternative did not exist, some of our most beloved products might not be what they are today.
The protection of your trademark is one of Lloyd & Mousilli’s highest priorities. Our seasoned legal counselors can provide you with the necessary tools required to file a successful trademark application and maintain the integrity of your intellectual property.
In the e-commerce space, especially on Amazon's hyper-competitive marketplace, the available options are limitless for the consumer. There are endless amounts of products available from anywhere at any time, which is why brand identity is critical to stand out.
Considering the tremendous amount of e-commerce companies and Amazon sellers, there is always the possibility of infringement. This is why it is important that the consumer knows exactly who they are purchasing from.
The Amazon Brand Registry is a program that assists brand owners in protecting their intellectual property on Amazon. The most pertinent feature in this context is its Project Zero Program. Once infringement is proven, the program allows you to blacklist those infringing users.
The competitiveness of Amazon.com is why establishing a distinguished brand identity among legions of sellers is more crucial than ever. As an Amazon Brand Registry member, achieving standout brand recognition and brand awareness not only enriches the shopping experience but also fortifies your defense against patent infringements. This ensures that your brand can navigate the complexities of Amazon with confidence, preserving a strong reputation.
Joining the Amazon Brand Registry brings a wealth of benefits, crucial among them enhanced brand protection and heightened brand awareness among customers. Utilizing the tools Amazon provides, such as Brand Registry accounts and the Amazon Vine program, you can markedly advance your brand-building and make your customer journey more memorable -- with sound legal protection.
A popular seller on Amazon is bound to attract infringing parties who seek to capitalize on that brand’s reputation and loyal customer base. The infringing party may produce subpar products and deliver poor customer service. This can result in financial loss and a damaged reputation for the true brand. A trademark registration, however, gives the Amazon seller recourse to take action against the infringing party.
Establishing a trusted brand that customers will return to is key, and the first step is to ensure that your brand identity is protected by a trademark registration. This will safeguard both your brand’s identity as well as your customers from infringing parties. Joining Amazon's Brand Registry gives you the ability to report those infringing listings to keep your brand safe, and your customers satisfied.
For active Amazon sellers, it's key to meticulously manage your brand identity with robust brand protections, especially through trademark registration. By engaging in the Brand Registry program and integrating with the available ecommerce software solutions to protect your reputation and monitor your IP, you empower your Amazon business amplifies brand presence and significantly refine the customer experience.
To be listed on the registry, your brand must have an active, registered trademark through one of the following government trademark offices:
Once you’ve obtained a trademark registration, you may apply for the registry.
To qualify for Brand Registry enrollment, your registered trademarks must be acknowledged by the United States Patent and Trademark Office (USPTO) or international equivalents. Approval unlocks improved brand visibility on Amazon product pages and a more effective reputation management strategy, thus potentially boosting sales for registered brands. Moreover, the program aids in product authentication and building customer trust, placing your brand in line with Amazon's top-class brand positioning.
Obtaining a trademark begins with filing an application. Lloyd & Mousilli specializes in intellectual property and can assist you with the trademark application process from start to finish. We will guide you through the process of crafting a goods and services description and selecting appropriate evidence of use. Additionally, our seasoned attorneys are well equipped to advise you on overall IP strategy.
Click here to book a free strategy session with a member of our trademark team.
There is a loophole that allows some sellers to apply to Amazon’s Brand Registry even if their trademark is not officially registered yet. Sellers in the United States, United Kingdom, Germany, and India are eligible to apply to the registry while their trademark is pending in the application/examination phase. This is especially advantageous considering the registration process is currently averaging 8 to 12 months for United States applicants.
If you are in one of the above mentioned countries, your brand is eligible to apply to the registry as soon as your trademark application is pending.
Want to protect your brand and boost sales on Amazon.com and other Amazon Marketplaces? The Amazon Brand Registry empowers sellers with tools for brand protection, enhanced content, and powerful marketing opportunities.
By enrolling, you establish a Brand Registry account and gain access to tools that safeguard your brand identity. Combat counterfeit products, maintain an excellent Amazon reputation, and ensure that products customers find on Amazon product pages – including your own multi-page store – are authentic.
Amazon Brand Registry unlocks a range of benefits for Brand Owners, including:
The Amazon Brand Registry provides sellers with access to a powerful suite of tools and reports to manage brand identity and drive growth as a vendor:
Navigating the Amazon Brand Registry process can present challenges for a new seller. Here are some common hurdles and how to overcome them:
To make the most of your Brand Registry membership:
As a vendor, manufacturer, or brand, by following these best practices, you can effectively increase brand awareness and protect your intellectual property, which includes trademarks, copyrights and brand names. This will lead to greater brand recognition while you enhance brand visibility and drive sales on Amazon and other marketplaces.
The Amazon Brand Registry enhances your brand presence. Amazon business owners like yourself can skillfully navigate marketing channels knowing your vital intellectual property has the foundation of Amazon safeguards.
Protecting your intellectual property is critical to maintaining your brand's identity. Our experienced counsel can guide you through the trademark application process to ensure you have the greatest likelihood of achieving registration. We are well-versed in the Amazon Brand Registry process and are ready to help you claim your place on the registry.
“The Rusty Krab is a parody restaurant concept inspired by SpongeBob giving it a new comedic purpose within the context of a restaurant. While Intellectual property law is complex, it is not a “secret formula.” Per U.S. copyright and trademark law, parody squarely fits into the fair use doctrine, which provides for the legal, unlicensed use of copyrighted material,” said Feras Mousilli, managing partner of Lloyd & Mousilli, the law firm defending PIXI against Viacom’s allegations.
“We have extensive experience prosecuting and defending against intellectual property infringement claims. It’s our bread and butter, so to speak. As with all of our cases, we intend on advocating zealously for PIXI,” added Lloyd & Mousilli’s litigation partner, Lema Barazi, who will serve as the lead attorney representing PIXI in court.
Unfortunately, Viacom asserts rather porous claims that The Rusty Krab misleads consumers to believe the restaurant is affiliated with Viacom’s SpongeBob franchise.
“Ever since Pop-Ups by PIXI started, we have clearly stated that we have no affiliation with the brands we are parodying. As with our prior well-known pop-ups, and with the Rusty Krab, potential customers are made aware prior to purchasing tickets that there is no affiliation to the brand itself,” said Sanju Chand, President of PIXI Universal, LLC.
The Rusty Krab is a place for fans of all ages to indulge in a paradoxical world reminiscent of SpongeBob SquarePants, as told through the eyes of PIXI.
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