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The metaverse is essentially an immersive experience that integrates the virtual world and reality, allowing users to interact with one another even if they are not physically in the same space. People can work, shop, and socialize in the metaverse the same way they do in real life. This inevitably translates to a digital economy; users can sell and purchase virtual products, like clothes and real estate, that only exist in the metaverse.
Major brands are preparing to enter the metaverse by trademarking their logos and products.
Your intellectual property is valuable and should be protected- both physically and virtually. Creators are already taking advantage of the unprecedented circumstances created by the introduction of the metaverse. For example, third-parties filed two trademark applications last year to use Prada and Gucci logos on “downloadable virtual goods” on metaverse platforms. The third parties are unaffiliated with the real Prada and Gucci, but their attempt to capitalize on major brands in the metaverse marketplace is an indication of what is to come.
Shielding your brand’s name and image in the virtual world is crucial. Lloyd & Mousilli can guide you through the complexities of obtaining a trademark for use in the metaverse to ensure you are afforded the protection your brand is entitled to.
Fraudulent use of your intellectual property by unaffiliated third parties can be detrimental to your brand’s image. The last thing you want is your customers being exposed to confusingly similar products being sold by infringers. A trademark will legally protect your brand in the event that your products or intellectual property are infringed upon. Even if your brand has already obtained trademark registrations for the “real world,” you should consider filing separate applications for those existing trademarks that cover distinct virtual goods and services. This will ensure that such rights are recognized and protected in the metaverse virtual marketplace.
The first course of action to enforce a trademark is typically to send a cease and desist letter to the infringer. If this is unsuccessful in stopping the infringement, the next step is to file a lawsuit. Trademarking in the metaverse is a relatively new concept so it is still too early to say exactly how trademark enforcement in the virtual world will unfold, but the general process of stopping an infringer will be the same. Lloyd & Mousilli is prepared to preserve the integrity of your brand by counseling you in the event of trademark infringement.
Filing a trademark application for your brand is the first step. Lloyd & Mousilli's trademark attorneys understand the complexities of intellectual property, as well as the intersection of technology and law. Book a consultation to discuss more in depth about the trademark process as it pertains to the metaverse.
Injunctive Relief is a court-ordered act or prohibition against an act that has been requested in a petition to the court for an injunction. Usually, injunctive relief is granted only after a hearing at which both sides have an opportunity to present testimony and legal arguments (NOLO, n.d.).
A Temporary Restraining Order is a court order that prevents someone from committing a certain action endorsed by the court. This type of order has a specified time limit and does not exceed 14 days, unless the court sets a time before that date.
A Permanent Injunction is a court order that a person or entity take certain actions or refrain from certain activities. A permanent injunction is typically issued once a lawsuit over the underlying activity is resolved, as distinguished from a preliminary injunction, which is issued while the lawsuit is pending (NOLO, n.d.). Injunctions are decisions made by the court commanding or preventing a specific act. This is useful in Intellectual Property disputes when parties are arguing over ideas and intellectual rights owned by one of the parties.
When there is a patent, copyright, or trademark owned by a party, that party can prove to the court that they own that property protected by the law. With this document stating they own the rights to the specific property, they are able to request a permanent injunction from the court to prevent another party from using their property.
For example, if you owned a trademark for the company name “Amazing Star”, and you noticed that a store opened with the name “Amazing Star” across the street from your business then they would be infringing on your entity’s trademark. In order to receive injunctive relief from the court, you will need to provide the trademark declaration to the court for proof of ownership.
First, you must decide if your case should be heard in State or Federal Court. This can be deciphered by determining the questions or diversity involved in your case. Inter-state issues should be filed in Federal Court, whereas issues that are within state jurisdictions should be filed in state courts.
Once you have decided if the case should be filed in State or Federal Court, it would be beneficial to decide which court you would like to petition to hear the case. This is a crucial step to ensure that the judge you decide to request a hearing from is willing to hear – and potentially grant your case.
To begin your request to the court, you would likely want to start with the complaint. This is beneficial to the judge overseeing the case because it will give the judge an idea of what to expect during the hearings and the duration of the trial. You should be as descriptive as possible in your complaint, but not excessive. This complaint will be attached to the petition that is filed with the court.
Before you submit your petition to the court, you want to ensure that you have reviewed the local rules of the court. This will help to have a better understanding of how the process would go moving forward in the case. Most courts post their local rules on their respective websites. These rules are usually issued by the presiding judge and abided by their associates.
Once you have reviewed all the facts needed and verified that you have included all necessary points, you can proceed with filing with the court. After reviewing all the rules associated with the court, you can adjust accordingly for a likely outcome. (American Bar Association, n.d.).
A Preliminary Injunctive Relief can benefit the Plaintiff in an Intellectual Property Dispute by bringing the seriousness of the damages to the court’s attention. This is most useful when there are other parties involved that seek to steal or misuse property that would otherwise cause the Plaintiff’s company harm. A Preliminary Injunction MUST show that the Plaintiff will suffer irreparable harm unless the injunction is granted.
If your request for a preliminary injunction is denied by the court, and sufficient evidence has been provided, the party requesting the preliminary injunction may file and interlocutory appeal (an appeal that occurs before the trial court’s final ruling on the entire case). There are three reasons that must be met in order to complete an interlocutory appeal. First, the order must have conclusively determined the disputed question. Second, the order must “resolve an issue completely separate from the merits of the action. Finally, the order must be “effectively unreviewable on appeal from a final judgment.” (Cornell Law School, n.d.)
This may seem like a lot of information, but there are resources out there to help with the questions you have. Selecting the best attorney that suits your needs and has the experience you need to get this case through is a hard task. At Lloyd & Mousilli, we are here to help get you through the difficult times and strive to get you the best outcome for you and your company.
While driving down the road, you might recognize that a McDonald’s is approaching your line of sight by identifying the infamous “golden arches” at the forefront of your dashboard. With this iconic symbol pinned at nearly every intersection, it is difficult not to recognize the fact that McDonald’s has some pretty serious brand establishment.
It is no easy feat to accomplish this type of remunerative stature, however, the process of protecting a brand’s identity is a great way to start. Submitting a trademark application is one of the first things a business can do to establish an economic profile and jump start a brand’s identity.
The word “trademark” can refer to both trademarks and service marks. The United States Patent and Trademark Office (USPTO) defines a trademark as a word, phrase, symbol, design or a combination of any of the aforementioned that defines goods or services. This is how consumers are likely able to identify a brand from other potential competitors and can also protect a business from its economic rivalries.
With that said, any business entity or individual can apply for a trademark. It is an essential part of protecting a company’s intellectual property and can emphasize the marketability of a business.
During the process of filing a trademark application, the mark will be evaluated as to whether it is registrable, and how difficult it will be to protect. After this has been determined, the application will be submitted to the USPTO for review and approval.
From this point forward, the proposed mark will live in the Trademark Electronic Search System (TESS) while awaiting review. TESS is a trademark database that allows anyone in the world to search for trademarks that have been registered or applied for in the United States. This platform is used to show the public what trademarks are currently awaiting registration, and which of those already have a registered status. This also give entities a closer look into the current climate of what companies are looking to register as their own mark.
Such as any publicly searchable database, TESS provides a great deal of public exposure to pending trademark applications, which can be a huge topic of concern for high-profile companies. Big fish brands have to go through the same process of filing a trademark application just like any other business, so a considerable amount of time, strategy and analysis goes into selecting the best course of action for submitting a trademark.
Recently, companies have gotten more sophisticated with how they approach submitting their trademark applications. With society’s ever-growing concern for the next big product, it has become harder and harder for brands to mask their newest creations inside the world of the internet, thus requiring concealment. The most recent example of a successful trademark concealment can be found in Apple’s latest addition to their tech roster, the iPhone 14.
September 16, 2022 marked the release of the new and improved iPhone 14, with some pretty distinctive upgrades. Most notably, what was once was a thick black indent on the top of the screen is now an interactive touch bar titled the Dynamic Island. This new upgrade allows the user to engage with the screen in a multitude of variations that are not privy to older iPhone generations.
Apple is no stranger to trademarks, so it can be assumed that their strategy on filing certain trademark applications is razor sharp. The submission of the Dynamic Island trademark was kept well under wraps without an inkling of potential for pre-exposure, and many ask how this was possible given the highly anticipated launch of the tech giant’s newest addition to the iPhone dynasty.
This concept of concealing trademark applications to prevent pre-exposure has become an increasingly used tactic amongst many big named brands. TESLA is another example of a very established company that utilizes this tactic to conceal their latest and greatest trademark. Other companies use this approach to prevent competitors from searching for technology gold.
With that, there are certain strategies you can implement into a trademark application to prevent the general public from viewing and potentially replicating a mark. Trademark concealment is most commonly utilized when a brand wants anonymity during the process of waiting for a trademark registration, which has consistently been met with success. This is accompanied by using foreign priority rights to keep the trademark filing a secret.
Section 44(d) of the Trademark Act has allowed companies to jump over the hurdle of having their trademark applications displayed in the Trademark Electronic Search System by filing their trademark application in a foreign country such as Jamaica, or in any other country that does not have an online database viewable to the public. If someone wanted to view the recent trademark applications in Jamaica, they would need to go the physical Jamaican trademark office. This provides an extra layer of effort and determination for scouters to cross through in attempting to leak a mark.
Now, subject to scrutiny and public opinion, this loophole does not have a very long shelf-life. If a company intends on having their mark registered with the United States Patent and Trademark Office, it is required that trademark applicants file with the U.S. claiming priority to the trademark within 6-months of filing the foreign application. Given the fact that the majority of brands use this tactic to prepare for the release of major products, the concern of the concealment lifespan is marginal to most.
Section 44(d) gives companies practically 6-months of secrecy to prepare for any necessary actions before the trademark is officially released as public record in the U.S. Whether that be a media event or a soft social media launch, it is imperative to a business that their secrets remain well hidden- and rightfully so.
This is an extremely useful way for brands to maintain the integrity of their most prized trademark applications, and a beneficial tool to utilize when there is concern over competitor poaching. If this alternative did not exist, some of our most beloved products might not be what they are today.
The protection of your trademark is one of Lloyd & Mousilli’s highest priorities. Our seasoned legal counselors can provide you with the necessary tools required to file a successful trademark application and maintain the integrity of your intellectual property.
In the e-commerce space, 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 in the online marketplace. Considering the tremendous amount of e-commerce companies, there is always the possibility of infringement. This is why it is important that the consumer knows exactly who they are purchasing from.
The Amazon Brand Registry is a program that assists brand owners in protecting their intellectual property on Amazon. The most pertinent feature in this context is its Project Zero Program. Once infringement is proven, the program allows you to blacklist those infringing users.
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.
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, the United Kingdom, the European Union, and the United Arab Emirates.
Once you’ve obtained a trademark registration, you may apply for the registry.
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 consultation with a member of our trademark team.
There is a loophole that allows some sellers to apply to Amazon’s Brand Registry even if their trademark is not officially registered yet. Sellers in the United States, United Kingdom, Germany, and India are eligible to apply to the registry while their trademark is pending in the application/examination phase. This is especially advantageous considering the registration process is currently averaging 8 to 12 months for United States applicants.
If you are in one of the above mentioned countries, your brand is eligible to apply to the registry as soon as your trademark application is pending.
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.
In this article, we have provided all the steps involved in the USPTO trademark process and trademark registration timeline, from filing to declaration of Trademark.
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 or you can wait for the updates from us, we will update you on the trademark application status on a regular basis.
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.
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.
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 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.
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 our customers.
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.
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 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.
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).
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.
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.
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.
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.
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.
If you would like more specific guidance about the U.S. Patent and Trademark Office trademark process and trademark process timeline as applicable to your scenario, schedule a free 15-minute consultation 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.