trademarks

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.

Topics Covered in "Don't Get Tricked: Unmasking the Most Common Trademark Scams"

• The sinister scams trademark attorneys and applicants are facing today
• Clues and red flags to watch for in email and phone solicitations
• Ways to protect your clients from falling into a scammer’s trap
• How to "exorcise" fraudulent uses of your credentials from the US Trademark Register

The Hosts

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.

Webinar Registration

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.

About Lloyd & Mousilli

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.

About Alt Legal

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.

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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.

Vtuber Trademark Portfolios

‍Large Agencies

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:

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Medium-sized Agencies

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.

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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.

Quick Question: Which of these words are currently federally registered trademarks in the US?

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.

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Answer:

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.

How to Work with Us

1. Book a free intake call at lloydmousilli.com/calendar.
2. Provide details and context about your business.
3. Sign electronic engagement letters and make flat fee payments.

Lloyd & Mousilli IP Litigation Team

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.

About Lloyd & Mousilli

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.

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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

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Lloyd & Mousilli, Attorneys & Counselors at Law

[email protected]

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. 

How to Work with Us

1. Book a free intake call at lloydmousilli.com/calendar 
2. Provide details and context about your business
3. Electronic engagement letters and flat fee payments

Lloyd & Mousilli Trademark Team

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.

Trademark Services Provided

• Availability Searches
• US and International Trademark Applications
• Office Action Responses
• Trademark Oppositions
• Trademark Cancellations
• Trademark Licensing
• Trademark Sales
• Trademark Infringement Monitoring 
• Trademark Demand Letters
• Trademark Litigation

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. 

About Lloyd & Mousilli

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.

Scammers Posing as Government Agencies and Personnel

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.

The Trademark Renewal Trap

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. 

Phony Private Registries and Legal Services

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. 

Conclusion

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.  

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Why Conduct Trademark Searches?

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.

The Pitfalls of Neglecting Trademark Searches

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.

Utilizing the Right Resources for Trademark Searches

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.

Crafting a Legally Sound Trademark Strategy

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.

What is the USPTO's expedited review process?

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.

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Eligibility requirements for expedited review

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.

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How to apply for expedited review

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:

1. A comprehensive statement outlining the reasons why your application warrants special consideration.
2. Supporting facts indicating potential trademark infringement, legal disputes, or the necessity of U.S. registration to secure a foreign trademark.
3. Evidence demonstrating potential losses the applicant may incur if the application is not expedited.

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Things to consider before filing a petition to expedite your trademark

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:

• Financial resources necessary to cover the cost of the Petition
• Whether or not your evidence and circumstances justify expedited processing
• Whether or not there is ongoing litigation related to your trademark
• How long your trademark has been in use

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If you are unsure of your eligibility or need assistance with filing, Lloyd & Mousilli can advise you on the best course of action.

Your business name is not just a label; it's the beacon of your brand's identity, guiding consumers to the unique products and services you provide. In the entrepreneurial journey within the United States, where your brand essence is crucial to your market presence, the protection of your name isn't just an option—it's essential.

However, the formation of an LLC, just like a Corporation or Sole Proprietorship, while providing a foundation for your business structure, does not automatically shield your name from potential infringement.

Without robust intellectual property safeguards, your cherished business name remains exposed to risks that could undermine your brand and reputation, or even lead to a costly lawsuit.

No, an LLC doesn't protect your business name, and neither does a C-corp, S-corp or sole proprietorship. But trademark registration does. Read on to find out how your business name can be protected from legal risk and what you can do about it—starting today.

Your business name is not just a label; it's the beacon of your brand's identity, guiding consumers to the unique products and services you provide. In the entrepreneurial journey within the United States, where your brand essence is crucial to your market presence, the protection of your name isn't just an option—it's essential.

However, the formation of an LLC, just like a Corporation or Sole Proprietorship, while providing a foundation for your business structure, does not automatically shield your name from potential infringement.

Without robust intellectual property safeguards, your cherished business name remains exposed to risks that could undermine your brand and reputation, or even lead to a costly lawsuit.

Trademark protection is vital for business owners seeking to secure their brand identity against infringement, as LLCs and other legal entities do not offer this safeguard inherently. For entrepreneurs considering forming a business entity, understanding the trademark process and consulting with a trademark law firm for legal advice can greatly enhance their assets' security and ensure comprehensive brand protection.

What Is an LLC?

An LLC, or Limited Liability Company, offers a blend of flexibility and protection, shielding owners from personal liability for business debts and offering favorable tax treatments, much like other corporation structures but with distinct advantages.

While essential, forming an LLC through filing a Certificate of Formation with your Secretary of State is merely the first step. Here at Lloyd & Mousilli, we dive deeper, preparing all vital corporate documents to ensure your business is a well-constructed fortress from the start.

Trademark protection is essential for any business, regardless of its structure, to safeguard its valuable assets and branding. Understanding the intricacies of trademark rights and the implications of trademark infringement is crucial for entrepreneurs and LLC owners looking to effectively shield themselves from potential legal challenges and liabilities.

How do I protect my brand name in the USA?

But what about protecting the very essence of your identity—the name of your LLC, or your product or service? This is where trademarking, guided by the United States Patent and Trademark Office (USPTO), shines as your safeguard. Registering your business name as a trademark solidifies your claim over it, marking it as uniquely yours in the commercial arena.

A trademark not only includes the name of your LLC, but it also extends to the logo that represents your brand, ensuring you have exclusive rights to it. For many entrepreneurs, securing federal trademark protection through the United States Patent and Trademark Office (USPTO) can be a crucial step in safeguarding their legal name and preventing other companies from infringing on their ownership rights.

What is a trademark and how is it important to my LLC?

A trademark is a word, phrase, symbol, and/or design that distinguishes one company's products and services from a competitor. Trademarking empowers you to take decisive legal action against any misuse of your brand name, preserving the integrity of your brand.

A trademark is more than just legal protection; it is a declaration of your brand's uniqueness, differentiating your offerings from competitors', enforced by the stringent laws of the United States.

A trademark serves as a vital tool for new business owners, offering important legal reasons to protect their chosen business name and brand identity. By filing trademark applications with the US Patent and Trademark Office and conducting a comprehensive trademark search, small businesses can significantly lower the risk of litigation and safeguard their interests against competitors who may attempt to steal their business money or reputation.

How do I register an LLC trademark?

With Lloyd & Mousilli's expertise in intellectual property, we guide you through the nuances of trademark registration with the USPTO, ensuring your business name commands the respect and recognition it deserves within your industry.

Our specialized team is ready to navigate you through the intricacies of trademark application. From identifying the appropriate goods and services class to crafting a comprehensive trademark strategy, our hands-on approach simplifies the process, giving you peace of mind and more time to focus on what you do best—growing your business.

By partnering with us, you ensure that your trademarks are legally secured, providing you and your limited liability company (LLC) with the necessary legal entity protections. Our approach not only clarifies whether an LLC can shield its owners from bankruptcies and lawsuits but also prepares you to combat scenarios where a business steals your intellectual property rights.

In short, Does an LLC Protect Your Business Name?

No. Granted, forming an LLC does offer a solid foundation for protecting your business identity. The structure of an LLC shields personal assets in legal situations. It also clearly separates the organization from its owners in the eyes of the law. However, forming an LLC alone does not guarantee automatic protection for your trademark or business name. To ensure your business name is fully safeguarded, you must undertake trademark registration at state or, ideally, federal levels for nationwide protection against infringement.

Advantages of an LLC for Business Protection

Forming an LLC protects your business in many ways:

1. Liability Protection: Unlike a sole proprietorship, an LLC offers liability protection. It separates personal assets from business liabilities. This legal structure positions you as the clear legal owner of the business name, essential for sustaining a robust brand identity.
2. Enhanced Credibility: An LLC enhances credibility with clients and partners. This provides a layer of legitimacy and safety. Such a structure is especially beneficial in competitive markets, indicating a formal commitment to business operations and reputation management.

The Risks of Neglecting LLC Name Protection

Without appropriate steps to protect your LLC name, you may encounter legal challenges and brand recognition issues. Competitors might register similar names, potentially compromising your unique market identity and leading to disputes. Proactive methods like securing patents and trademark registration are vital for maintaining your LLC's distinctive character and preventing conflicts.

Key Steps to Protect Your Business Name

1. State-Specific Registration: Registering your business name as part of your LLC formation establishes your rightful ownership and deters potential infringements. This is crucial in maintaining brand integrity.
2. Diligent Monitoring: Pay attention how your business name is used in the marketplace to catch any unauthorized use early. Prompt action against infringements helps maintain your brand’s integrity.
3. Understanding Trademark Protection: Acknowledge that LLC formation is just one step. Comprehensive brand protection requires a trademark strategy to fully secure your business name against misuse.

Conclusion: LLCs and Business Name Protection

In summary, LLCs don't automatically secure your company name against competition or misuse. The power's in your hands to protect it. And how do you do it? Actively managing your brand, applying for trademark registration, and complying with relevant legal requirements. Only through these efforts can you realize the full benefits of an LLC in protecting your business name. That's the sure way to reap the rewards of long-term brand credibility and market position.

How Can Lloyd & Mousilli Help with My LLC?

Take the first step in fortifying your brand's legacy. Schedule a free consultation with a Lloyd & Mousilli expert today. Or, if you're ready to propel your trademark journey forward, our straightforward trademark intake form awaits your key details to kickstart the process.

Let Lloyd & Mousilli be your companion in transforming your brand from vulnerable to invincible. Your business name, whether tied to an LLC, Corporation, or Sole Proprietorship, is the cornerstone of your identity. Protect it with the vigilance it deserves, under the vigilant eyes of the United States Patent and Trademark Office.

What is the Metaverse?

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. 

‍Who is trademarking in the Metaverse?

Major brands are preparing to enter the metaverse by trademarking their logos and products. 

• Nike has filed seven trademark applications with the USPTO in which the company indicated its intent to make and sell virtual apparel. 
• CVS Health filed to trademark its pharmacy and health clinics with the USPTO, intending to patent sales of virtual goods like wellness and beauty products, prescription drugs, and non-emergency medical services.
• Walmart has filed several trademarks that indicate its intent to market virtual goods. In a separate filing, Walmart specified that it would offer customers NFTs and a virtual currency. 
• Most notably, Facebook has dedicated itself to total immersion in the metaverse. Last year, the company officially changed its name to Meta. 

‍Why are trademarks in the Metaverse important?

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. 

‍What protections does a trademark in the Metaverse offer?

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. 

‍How are trademarks in the Metaverse enforced?

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.

You Want In: Where Do You Start?

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.

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‍What is Injunctive Relief?

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.).

What is a Temporary Restraining Order?

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. 

‍What is a Permanent Injunction?‍

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. 

What does a Business need to prove to get a preliminary injunction awarded?

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. 

How Do I Request an Injunction?

Prepare Your Complaint

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. 

Review Applicable Rules

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. 

Proceed with Filing

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.)

Lloyd & Mousilli Can Help

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.

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What is a Trademark?‍

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. 
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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.

Filing a Trademark Application

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.‍

Concealing a Trademark Application ‍

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. 
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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. 
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What is Section 44(d)?

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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. 
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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. 
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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. 
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Conclusion ‍

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.

Brand Protection in E-Commerce and Your Amazon Store

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.

What is the Amazon Brand Registry?

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.

Why is Amazon's Brand Registry important?

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.

How do I create a Brand Registry Account?

To be listed on the registry, your brand must have an active, registered trademark through one of the following government trademark offices:

• United States
• Brazil
• Canada
• Mexico
• Australia
• India
• Japan
• France
• Germany
• Italy
• Spain
• Netherlands
• Turkey
• Singapore
• Saudi Arabia
• Sweden
• Poland
• United Kingdom
• European Union
• United Arab Emirates

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.

How do I obtain a trademark registration?

Applying for an E-Commerce Trademark:

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.

Can I join Amazon's Brand Registry if my application is pending?

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.

Benefits of Amazon Brand Registry

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:

• Enhanced Brand Protection: Fight back against patent infringements and unauthorized resellers. Utilize the Amazon Authenticity program, safeguard your product listing, and build customer loyalty. Active Amazon sellers know that the Brand Registry helps ensure customers find authentic items, not fakes.
• Boost Sales with Increased Visibility: Optimize your Amazon product listings with rich content and enhanced visuals. Attract new-to-brand customers with your own Brand Store, improve your brand positioning in Amazon Search results, and drive traffic to your online storefront.
• Powerful Marketing Features: Access exclusive tools like Amazon Brand Analytics to run reports, understand shopping trends, and know your customers better. Leverage Display Ads, Amazon Attribution (to track off-Amazon ads), and Sponsored Brands Ads to reach more shoppers. The Brand Registry helps you take control of your marketing channels.
• Dedicated Brand Registry Support: Get help from Amazon experts to navigate the platform, address any issues, and make the most of your Brand Registry benefits. They can also help you understand sales trends better.

Features of Amazon Brand Registry

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:

• Brand Registry Portal: Your central hub to access exclusive tools, report infringements, manage your brand registry data, and track performance across all country-based Amazon stores. It’s also where you’ll manage multiple brand registry accounts if you have them.
• Amazon Brand Analytics: Gain insights into customer searches, get a deeper understanding of competitor products, and analyze your brand's key performance metrics. You'll get closer to knowing what customers are searching for before they make a purchase.
• Reporting Tools: Monitor your product sales, track brand performance through the main Brand Dashboard, and receive valuable customer feedback. This all contributes to better reputation management.
• Additional Features: Benefit from the Amazon Transparency Program to maintain your seller reputation. Use Product Serialization – assigning a unique code to each product – to protect against counterfeits. Leverage the Amazon Attribution console for more effective ad campaigns and targeting.

Common Challenges in the Brand Registry Process

Navigating the Amazon Brand Registry process can present challenges for a new seller. Here are some common hurdles and how to overcome them:

• Trademark Issues: Amazon Brand Approval requires a full trademark certificate from a source like the United States Patent and Trademark Office (USPTO). Understand their trademark registration requirements, get your utility patent or copyright from the United States Patent and Trademark office, and ensure your trademarks are correctly registered before you apply. A thorough, informed trademark search through the United States Patent and Trademark Office (USPTO) database can help you avoid trademark disputes before you even apply. While you can go it alone, the experience and nuance of an attorney can help you avoid pitfalls.
• Application Rejections: Incomplete brand registry applications or trademark issues can lead to rejections. Thoroughly review Amazon policies and seek Brand Registry help from Amazon Support if needed.

Best Practices for Maintaining Brand Registry

To make the most of your Brand Registry membership:

• Regularly Update Brand Information: Keep your Brand Page, product listings (including Amazon Product Detail Pages), and brand name information up-to-date and accurate. An attractive brand page will catch the eye of Amazon customers. Respond to Amazon reviews and customer feedback. This ensures a good shopping experience and strengthens your brand's presence.
• Monitoring and Addressing Infringements: Use the tools provided by the Brand Registry to monitor your Amazon Store for unauthorized sellers and counterfeit products. Be proactive in protecting your intellectual property.
• Engage with Amazon Support: Utilize the resources available through the Amazon Transparency program, the Amazon Vine program, and don't be afraid to contact Amazon Support with questions or to report infringements. They offer several brand registry benefits and can provide the ultimate guide to Amazon success.

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.

How Lloyd & Mousilli Can Assist with Brand Protection in E-Commerce

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.

Geoffrey the Giraffe is casting an ominous shadow over one Texas family.

Last summer, almost immediately following the news that Toys “R” Us and Macy’s were teaming up to relaunch the iconic toy store in the U.S., The Toy Book reported on a detour from that forward movement as Tru Kids Brands Inc. — the WHP Global-owned parent of the Toys “R” Us and Babies “R” Us brands — took a step backward and filed a lawsuit against an independent toy store in New Jersey.

At the time, Tru Kids alleged “trademark infringement” as the store, Toys & Beyond, had moved into the space that was previously occupied by one of the two, short-lived Toys “R” Us concept stores that opened in partnership with b8ta in 2019. At the center of the complaint were issues regarding the colorful logo of Toys & Beyond and the reuse of fixtures and signage, including Geoffrey’s Treehouse, Geoffrey’s Magical Mirror, and the Play Around Theater, that were left behind when Toys “R” Us abandoned the space at the Westfield Garden State Plaza in January 2021.

On Oct. 25, 2021, The Toy Book was first alerted to a nearly identical lawsuit filed in Texas against TOYZ, a family-owned toy store that opened nearly 20 years ago. Farida Afzal immigrated to Houston from Pakistan and built a business that eventually grew to include a distribution arm and several retail stores, including a small location on the lower level of Simon Property Group’s Galleria Mall.

In its response to the complaint filed by attorneys at Baker Botts on behalf of Tru Kids Brands, Afzal Ali Enterprises, Inc. dba TOYZ noted that its store peacefully co-existed with Toys “R” Us during the time that both stores were open in the Galleria. According to the response, the scuffle began months after Toys “R” Us closed, when the Galleria landlord offered TOYZ the opportunity to expand into the former Toys “R” Us store.

Nearly a year later, the legal battle continues and it’s begun making headlines as The Houston Chronicle, alongside ABC and CBS affiliates have reported on the story. Meanwhile, a Change.org petition is calling upon WHP Global and Tru Kids Brands to drop the lawsuit, while members of the U.S. and global toy communities, including Richard Derr of Learning Express, MGA Entertainment Founder and CEO Isaac Larian, Toy World Publisher John Baulch, World Alive Founder Amy Holden, and Michael Olafsson of Monkey Fish Toys have taken to LinkedIn to express support for the owners of TOYZ and call for an end to what appears to be legal bullying in a “bleed them dry” campaign.

In Texas, it appears that Judge Charles Eskridge might agree.

On August 23, Judge Eskridge issued a scathing order against Tru Kids Brands and Toys “R” Us.

In the filing, Judge Eskridge denies a motion by Tru Kids to amend its complaint against TOYZ, stating that “the motion itself evinces undue delay and dilatory motive,” and that “the motion could also be considered abusive.”

“Toys ‘R’ Us is trying to shutter a family-owned toy store in an attempt to set a precedent for shutting down any toy store in the country that has a multi-colored logo,” Lema Barazi, lead attorney representing TOYZ for Lloyd & Mousilli tells The Toy Book. “We must — and I am confident that we will — prevail against Toys ‘R’ Us in its malicious tactics of burying small businesses in protracted litigation based on frivolous and overreaching trademark claims.”

And the tactics being used by Tru Kids brands are under scrutiny by the court itself.

Judge Eskridge says in his order that “substantial question exists regarding whether Tru Kids has initiated this action primarily for the purpose of harassing or maliciously injuring a competitor, and whether it is using the law’s procedures only for legitimate purposes.”

Tru Kids Brands was ordered “to provide by Sept. 13, 2022, an iteration of all actions it has initiated against any defendant worldwide since acquiring its interest in the Toys ‘R’ Us brand in January 2019, wherein it has alleged claims, as here, of trademark and trade-dress infringement, trademark dilution, unfair competition, or unjust enrichment relating to Toys ‘R’ Us intellectual property,” Judge Eskridge declared.

Attorneys for Tru Kids Brands did file documents to meet the Sept. 13 deadline but they did so in a sealed filing. Ahead of the deadline, The Toy Book reached out to WHP Global/Tru Kids Brands on Sept. 12, but the company did not respond to a request for comment.

While the legal dance continues to play out in court, Toys “R” Us is continuing to open its new store-within-a-store concepts in every Macy’s store ahead of an Oct. 15 completion date. Both the Galleria in Houston and the Westfield Garden State Plaza in New Jersey have Macy’s stores that are set to include Toys “R” Us departments.

Although Toys & Beyond closed its store in New Jersey, the space is currently occupied by yet another toy store: CAMP.

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Trademarking is a critical step for businesses seeking to establish their brand identity and protect their intellectual property rights. This article walks you through all the steps involved in the USPTO trademark process and trademark registration timeline, from filing to declaration of your Trademark.

Submitting your USPTO trademark application is exciting, and also risky. There are many steps to not only achieving trademark registration in the United States, but keeping it, as the USPTO enforces various fees and deadlines from the very start all the way through the life of your trademark. It is your responsibility to comply with these trademark laws.

Knowing the steps in the process can help eliminate uncertainties beforehand. If you need advice for your specific situation, it's best to retain experienced trademark attorneys who can guide you through the entire trademark process, including the initial trademark clearance and filing with the U.S. Patent and Trademark Office (USPTO).

Step 1. Application Filed for Trademarks

This step takes about 3 months. Lloyd & Mousilli files the application on your behalf based on your use of trademark in commerce. The filed application is assigned with a Serial Number. This number should always be referenced when communicating with the USPTO.

Once filed, you can check the status of any application throughout the entire process by entering the application serial number at http://tsdr.uspto.gov/ or by calling the trademark status line at 571-272-5400. Alternatively, you can retain a United States trademark law firm such as Lloyd & Mousilli, and we will update you on the trademark application status on a regular basis.

After the trademark application is filed, it enters the official trademark application process. It’s crucial to monitor its status for any updates or requirements from the USPTO. A well-structured trademark application not only signifies ownership but also strengthens trademark rights, safeguarding your brand names, logo mark or design against potential infringement.

Step 2. USPTO Reviews Application Timeline

Once the minimum requirements are met, the application is assigned to an examining attorney. The examining attorney conducts a review of the application to determine whether federal law permits registration. Filing fee(s) will not be refunded, even if the application is later refused registration on legal grounds. This process takes about 1 month before moving onto step 3b.

To ensure a smooth progression in your trademark journey, it is essential to meet all statutory deadlines set forth by the United States Patent and Trademark Office (USPTO). Engaging with trademark attorneys can provide expert guidance to navigate potential trademark situations and enhance your trademark protections effectively.

Step 3a. USPTO Publishes Mark

If no refusals or additional requirements are identified, the examining attorney approves the mark for publication in the Official Gazette (OG). The OG, a weekly online publication, gives notice to the public that the USPTO plans to issue a registration. Approximately 1 month after approval, the mark will publish in the OG for a 30-day opposition period. Any party who believes it would be harmed by the registration may file an objection (opposition) within that 30-day period with the Trademark Trial and Appeal Board. No further action is taken until the opposition is resolved. Approximately 3 months go to step 8.

The publication in the trademark official gazette is a significant milestone in the trademark registration process, as it alerts the public and allows for a 30-day period where any relevant parties can file opposition to the registration. Understanding the nuances of trademark law and working with knowledgeable trademark firms can greatly enhance the chances of ensuring trademark ownership while avoiding pitfalls during the trademark journey.

Step 3b. USPTO Issues Letter (Office Action)

If refusals or requirements must still be satisfied, the examining attorney assigned to the application issues a letter (Office action) stating the refusals/requirements. Within 6 months of the issuance date of the Office action, applicant must submit a response that addresses each refusal and requirement. Within 6 months go to step 4a or step 4b.

In the trademark registration journey, addressing Office actions promptly is essential to prevent delays in gaining official registration. Companies should maintain thorough documentation and consider trademark registration strategies to safeguard their brands against future infringement.

Step 4a. Timely Applicant Response

In order to avoid abandonment of the application, applicant must submit a timely response addressing each refusal and/or requirement stated in the Office action. With Lloyd & Mousilli, there is no reason for the application to be abandoned.

The examining attorney will then review the submitted response to determine if all refusals and/or requirements have been satisfied. Approximately 1 to 2 months go to step 5a or step 5b.

Timely responses to Office actions will protect your application from abandonment. If your application is abandoned, it can jeopardize your future with federally registered trademarks. By collaborating with a licensed trademark attorney, you can rest assured all responses will be timely.

Step 4b. Applicant Non-Response and Application Abandonment

If the applicant does not respond within 6 months from the date theOffice action was issued, the application is abandoned. The term “abandoned” means that the application process has ended and the trademark will not register. Filing fees are NOT refunded when applications abandon.

Abandoned applications are “dead,” since they are no longer pending or under consideration for approval. To continue the application process, the applicant must file a petition to revive the application within 2 months of the abandonment date. If more than 2 months after the abandonment date, the petition will be denied as untimely and the applicant must file a new application with the appropriate fee(s).

To make sure this will not happen, Lloyd & Mousilli offers this service to clients like yourself.

In short: If the applicant fails to act within the specified timeframe after an Office action, it may result in the abandonment of the application, marking a significant setback in the overall trademark registration process. That's why using services from a knowledgeable trademark team can significantly improve your chances of preventing abandonment and ensuring your desired trademark receives the necessary protections under current trademark statutes.

Step 5a. USPTO Publishes Mark

If the applicant's response overcomes the refusals and/or satisfies all requirements, the examining attorney approves the mark for publication in the Official Gazette (OG). The OG, a weekly online publication, gives notice to the public that the USPTO plans to issue a registration.

Approximately 1 month after approval, the mark will publish in the OG for a 30-day opposition period. Any party who believes it would be harmed by the registration may file an objection (opposition) within that 30-day period with the Trademark Trial and Appeal Board.

No further action is taken until the opposition is resolved. Approximately 3 months go to step 8.

Once the mark is published in the Official Gazette, all interested parties have the opportunity to review the registration and potentially challenge it if they believe that they would be harmed by the trademark. This period is critical in the trademark timeline, as it sets the stage for any disputes that may arise, emphasizing the importance of thorough preparations by trademark applicants, including trademark searches and consultations with a qualified trademark expert.

Step 5b. USPTO Issues Final Letter (Office Action)

If the applicant's response fails to overcome the refusals and/or satisfy the outstanding requirements, the examining attorney will issue a “Final” refusal letter (Office action). The Office action makes “final” any remaining refusals or requirements. An applicant may respond to a final office action by a) overcoming the refusals and complying with the requirements or b) appealing to the Trademark Trial and Appeal Board. Within 6 months go to step 6a or step 6b.

To successfully navigate the intricacies of the trademark application process, understanding the role of a trademark examiner is essential. A trademark examiner carefully evaluates each trademark application to ensure compliance with the U.S. Trademark Office's requirements, which can significantly influence the outcome of your trademark filing.

Step 6a. Timely Response and Appeal Filing

To avoid abandonment of the application, the applicant must submit a timely response addressing each refusal and/or requirement stated in the“Final” refusal letter (Office action).

Alternatively, or in addition to the response, the applicant may also submit a Notice of Appeal to the Trademark Trial and Appeal Board (TTAB). The examining attorney will review the submitted response to determine if all refusals and/or requirements have been satisfied.

If the applicant's response fails to overcome the refusals and/or satisfy the outstanding requirements, the application will be abandoned unless the applicant has filed a Notice of Appeal, in which case the application is forwarded to the TTAB.

The term “abandoned” means that the application process has ended and the trademark will not register. Filing fees are not refunded when applications abandon. Abandoned applications are “dead,” since they are no longer pending or under consideration for approval. Approximately 1 to 2 months go to step 7a or step 7b.

To maintain the integrity of your trademark journey, timely action is crucial to fulfill the requirements set by the United States Patent and Trademark Office (USPTO). Collaborating with a go-to trademarking expert can ensure that your new trademark application navigates potential challenges efficiently, ultimately safeguarding your trademark portfolio.

Step 6b. Applicant's Non-Response and Application Abandonment

If the applicant does not respond within 6 months from the date the Office action was issued and the applicant has not filed a Notice of Appeal to the Trademark Trial and Appeal Board, the application is abandoned.

The term “abandoned” means that the application process has ended and the trademark will not register. Filing fees are not refunded when applications abandon.

Abandoned applications are “dead,” since they are no longer pending or under consideration for approval. To continue the application process, the applicant must file a petition to revive the application within 2 months of the abandonment date, with the appropriate fee.

If more than 2 months after the abandonment date, the petition will be denied as untimely and the applicant must file a new application with the appropriate fee(s).

Abandonment of a trademark application can have serious implications for your company, impacting your marketing strategies and overall reputation in the marketplace. To mitigate risks associated with trademark abandonment, it is advisable to engage a trademark/patent attorney who can help navigate the complexities of the trademark process, ensuring thorough documentation and adherence to the specific timelines set by the USPTO.

Step 7a. USPTO Publishes Mark in the Approval Timeline

If the applicant's response overcomes the refusals and/or satisfies all requirements of the “Final” refusal letter (Office action), the examining attorney approves the mark for publication in the Official Gazette (OG). The OG, a weekly online publication, gives notice to public that USPTO plans to issue a registration.

Approximately 1 month after approval, the mark will publish in the OG for a 30-day opposition period. Any party who believes it would be harmed by the registration may file an objection (opposition) within that 30-day period with the Trademark Trial and Appeal Board. No further action is taken until the opposition is resolved. Approximately 3 months go to step 8.

Step 7b. Applicant's Appeal to TTAB

If the applicant's response does not overcome the refusals and/or satisfy all of the requirements and the applicant has filed a Notice of Appeal with the Trademark Trial and Appeal Board (TTAB), the appeal will be forwarded to the TTAB. Information about the TTAB can be found at www.uspto.gov.

Timely communication with the Trademark Trial and Appeal Board (TTAB) can greatly influence the outcome of your appeal process. By conducting a comprehensive trademark search and working closely with an experienced trademark lawyer, you can better navigate the complexities surrounding your trademark application filing and enhance your chances of final trademark approval.

Step 8. Mark Registers Successfully

Within approximately 3 months after the mark published in the Official Gazette, if no opposition was filed, then the USPTO issues a registration. If an opposition was filed but it was unsuccessful, the registration issues when the Trademark Trial and Appeal Board dismisses the opposition.

After a registration issues, to keep the registration “alive” the registrant must file specific maintenance documents. Between 5 to 6 years go to step 9 and every 10 years go to step 10.

After the registration is issued, the trademark owner must ensure they comply with maintenance requirements to keep their trademark alive and enforceable. Understanding the trademark timeline is critical, as maintaining attention to filing deadlines and renewal trademark applications can significantly influence both revenue and the integrity of the brand's legacy.

Step 9. Filing of Section 8 Declaration by Registration Owner

Before the end of the 6-year period after the registration date, or within the six-month grace period after the expiration of the sixth year, the registration owner must file a Declaration of Use or Excusable Nonuse under Section 8. Failure to file this declaration will result in the cancellation of the registration.

It’s important for brand owners to understand the potential challenges that can arise after the initial trademark registration. Being proactive and incorporating trademarking strategies can greatly assist in addressing issues related to trademark needs throughout the extensive trademark clearance process and ensure that the brand continues to thrive within the trademark timeline.

Step 10. Trademark Registration Owner Files Section 8 Declaration/Section 9 Renewal

Within one year before the end of every 10-year period after the registration date, or within the six-month grace period thereafter, the registration owner must file a Combined Declaration of Use or Excusable Nonuse/Application for Renewal under Sections 8 & 9. Failure to make these required filings will result in cancellation and/or expiration of the registration.

Summary of the Trademark Timeline

The trademark timeline, vital for securing brand identity, begins with the effective filing date and ends with a trademark certificate issuance, highlighting the importance of submitting well-structured trademark applications to the United States Patent and Trademark Office (USPTO). This process reviews logos, slogans, and descriptions against pre-existing trademarks under common trademark law, enhancing success rates. A comprehensive trademark search further increases the chances of eventual registration, and it can help greatly in refining your mark.

Understanding the Trademark Application Process

The trademark registration process unfolds in critical stages, from preliminary trademark clearance to avoid conflicts with similar trademarks, to the thorough examination by the USPTO. This evaluation against existing records is essential to prevent trademark office scams and align with the Trademark Act. The timeline extends with each stage, notably through publication periods in the Official Gazette, which invites public opposition and establishes the trademark portfolio. Essential actions like filing Section 8 Declarations maintain trademark validity, guiding through trademark registration's complexities.

Importance of Each Step in the Trademark Process

Ensuring successful trademark registration involves a structured USPTO trademark timeline, which requires attention to each step, from a detailed pre-filing trademark search to identifying conflicts with existing trademarks, to timely actions that lead to the issuance of the trademark certificate. This regimented approach addresses every facet of the trademark journey today, emphasizing the critical nature of deadlines and detailed documentation in achieving trademark approval, underscoring the necessity of adherence to U.S. trademark practice and laws for a robust trademark portfolio.

If you would like more specific guidance about the trademarking process as applicable to your scenario, schedule a free 15-minute strategy session with Lloyd & Mousilli.

Our award-winning trademark and patent lawyers have counseled everyone from the Fortune 500 to startups locally, nationally and all around the world. Whether you're a new startup wanting the competitive advantage of a registered trademark, or would like advice on your existing portfolio of trademark registrations, your legal needs will be covered. And if your company requires international IP protection, we can also help you secure international trademark registration with offices such as the World Intellectual Property Organization.