USPTO

What is delta-8 THC?

Delta-8 THC is a cannabinoid found in cannabis. The natural quantities of delta-8 found in cannabis are pretty low, so to create usable amounts of it, it typically has be synthesized from hemp.

Is it Legal? Well...maybe.

*Marijuana* is a schedule I substance outlawed under the Controlled Substance Act, but the lower-thc cannabis plant – Hemp – was removed from Schedule I back in December 2018. Although Schedule I continues to list “tetrahydrocannabinols,” there is an exception listed for “tetrahydrocannabinols in hemp.” So delta-8 THC isn’t unlawful under the CSA.

Delta-8 THC also isn’t included in any FDA-approved pharmaceutical, so it doesn’t fall under the FDCA (Federal Food, Drugs, and Cosmetics Act) in the way that hemp-derived CBD does.

These were the arguments that attorney Dustin Kovacic made last year to overcome the USPTO’s initial CSA and FDCA Unlawful Use Refusals and convince them to register his client’s mark PLIFT. Although the goods identification does not specifically reference hemp-derived delta-8 (or hemp-derived delta-9 THC, also present in the actual goods), the specimen and record explicitly made it clear that the goods contained these items. Although applications for unlawful goods have absolutely been registered at the USPTO in the past by sneaking past the examiner their exact nature, that was absolutely not the case here. This mark registered in June 2024.

Attorney Andrea Steel found this registration and shared it on LinkedIn the other day, starting a whole conversation about whether this indicates a larger policy shift in the USPTO’s treatment of hemp-derived THC cannabinoid products. Although the USPTO hasn’t made any explicit policy statements on cannabis goods/services since a rather vague May 2019 Examination Guide on the subject, I know from my experience as a trademark examiner on the controlled substances work team at the USPTO from 2019-2021 that their internal policies absolutely have changed several times.

https://www.uspto.gov/sites/default/files/documents/Exam%20Guide%201-19.pdf

For example, while the USPTO formerly accepted identifications of goods referring to “hemp,” identifications referring to hemp now generally have to include the chemical definition for clarifying purposes.

However, does this application really indicate a broader policy shift? There’s evidence indicating that that’s not the case.

There have been several applications to register trademarks with delta-8 THC goods identifications that have been pending at the USPTO unexamined for years. This sort of unofficial, unannounced suspension is something I’ve unfortunately noticed on several occasions when it comes to applications the USPTO doesn’t really want to deal with.

It does not appear that any applications which explicitly state delta-8 THC in the goods identification have been registered at the USPTO still, and the USPTO continues to ignore several of these applications entirely.

Affected applications include:

• LEAFY8NATURAL HEALING (with design) for a variety of hemp flowers and accessories, including “Hemp flower containing delta-8 tetrahydrocannabinol (delta-8THC) for use as a smoking herb.” Although this application was filed on Aug.05, 2021, it has yet to be examined by the USPTO over 3 years and 5 months later.
• VEGANCBD for a variety of cosmetic and beauty products, including “Cosmetic body care preparations, namely, skin care oil, massage oil, lotion, skin cream in liquid or solid form, hand cream, body cream, bath bombs, and/or lip balms; all of the foregoing with or without Nano (nanotechnology) and/or CBG (cannabigerol) and/orCBD (cannabidiol) containing goods derived from cannabis and/or hemp with aDelta 8 THC and/or Delta-9 THC concentration of not more than 0.3% on a dry weight basis.” It was filed Nov. 27, 2022 and has yet to be examined over 2 years and 1 month later.
• TWOROMANTIC for a variety of cigar and cigar accessories, including “Smokers' mouthpieces for cigars and cigarettes for use with or without cannibidiol (CBD) and other related Cannabinoids which include but is not limited to such as CBG, THCa,THC, THCv, Delta 8 THC, THVo, etc. all less than .3% Delta 9 THC/Delta 8 THC by dry weight basis.” Although this application was filed on May 30, 2023, it has yet to be examined by the USPTO over 1 year and 7 months later.
• SLAPZ for a variety of supplements and pharmaceutical preparations including  “Dietary and nutritional supplements containing delta-8 THC derived from hemp.” Although it was filed inMay 30, 2023, it still has yet to be examined by the USPTO over 1 year and 7 months later.
  

Those applications with Delta-8 THC identifications in them that have been examined, CSA or FDCA refusals continue to be issued.

• HI ON NATURE received CSA and FDCA Unlawful UseRefusals on Dec. 17, 2024, ~6 months after PLIFT registered in two applications– for a variety of goods/services including “Non-medicated lotions for skin and body which may contain delta-8 THC derived from hemp.”

What does this mean for the future of applications to register delta-8 THC and other hemp-derived cannabinoids at the USPTO?

It’s unclear. The USPTO’s policy on this continues to be arbitrary and inconsistent, but the approval of PLIFT indicates at least some hope that their approach to these apps may change soon.

The Importance of Trademark Monitoring

With the increasing complexity of global markets and the rapid pace of digital commerce, it is essential for businesses to monitor their trademarks proactively. Trademark monitoring not only helps businesses protect their brand from infringement, but it also enables them to maintain control over how their intellectual property is used. In this article, we’ll explore the significance of trademark monitoring, what it entails, and the potential consequences of neglecting it.

What is Trademark Monitoring?

Trademark monitoring is the practice of systematically tracking applications to register trademarks at the U.S. Patent and Trademark Office (USPTO) that may resemble your own. It involves regularly reviewing the U.S. trademark register and other databases to check for unauthorized use of your mark. Monitoring services provide regular reports and alerts about newly filed trademark applications that potentially could infringe on your own rights.

While registering a trademark with the USPTO grants the owner exclusive rights to use the mark with the stated goods and services in the United States, it does not on its own prevent unauthorized usage in the marketplace. It is the brand owner’s responsibility to monitor and enforce that registration against others’ infringing uses and registration attempts. Trademark monitoring helps businesses identify possible conflicts, even when the infringement occurs far from the owner’s home markets.

Why is Trademark Monitoring Important?

1. Protecting Your Brand's Identity

A trademark represents the unique identity of your business. Whether it’s a logo, name, tagline, or design, your trademark sets you apart from competitors and ensures consumers can recognize your products or services. If your trademark is used without permission, it could lead to confusion among consumers, causing them to mistakenly associate an infringing product or service with your brand. Monitoring allows you to detect potential infringements early and protect the integrity of your brand.

2. Enhancing Legal Protection

Being able to show that you have actively monitored your trademark also shows that you have taken reasonable steps to protect your intellectual property. This evidence can strengthen your case in court if you need to enforce your trademark rights. It can also act as a deterrent to potential infringers, who may be less likely to infringe if they know that you are actively monitoring your trademark.

3. Detecting Counterfeiting and Fraud

Counterfeiting has become a serious issue for many businesses, particularly in the digital age where online marketplaces and global trade make it easier for counterfeiters to operate. A monitoring service can help detect the sale of counterfeit goods or services that use your trademark without permission. By identifying these fraudulent activities early, businesses can take action to remove counterfeit listings, prevent further sales, and protect consumers from being misled.

4. Expanding and Growing Your Brand

Trademark monitoring can also help identify geographical areas or industries where your trademark may be at risk. It can help you stay ahead of any potential conflicts or challenges to your brand’s presence in new markets. This allows you to act swiftly to protect your trademark rights as your business extends into new regions, products, or services.

What Can Happen if You Don't Actively Monitor Your Trademarks?

1. Dilution of Your Brand

Trademark dilution occurs when the strength of your brand is weakened by unauthorized use of a similar mark. If your trademark becomes associated with a wide range of goods or services, it could lose its unique association with your brand. This might result in a loss of customer loyalty, as well as decreased brand value. Monitoring your trademark helps prevent dilution and ensures that your mark remains strong and distinctive in the eyes of consumers.

2. Legal Consequences

Failure to monitor your trademark and take action against infringements can result in significant legal consequences. If you fail to protect your trademark, a court may determine that you abandoned your rights to it. Additionally, if you neglect to oppose similar trademarks in time, you may lose the ability to challenge these marks in the future. Regular monitoring ensures you stay ahead of potential threats and avoid inadvertently giving up your legal rights.

3. Loss of Revenue

Counterfeit goods or services can divert revenue from your business. Without monitoring, you might not even be aware that your products are being counterfeited, leading to lost profits.

4. Damage to Customer Trust

One of the most valuable assets for any brand is customer trust. If consumers are misled by similar marks or counterfeit goods, they may lose faith in your products or services. It could take years to rebuild that trust, and in some cases, irreparable damage could occur.

Conclusion

Trademark monitoring helps safeguard your brand, prevent confusion, and protect consumers from counterfeiting. Given the growing complexities of a globalized marketplace, there has never been a more critical time for businesses to prioritize trademark monitoring and protect what they’ve worked so hard to build.

To learn more about how Lloyd & Mousilli can help protect your brand, schedule a consultation us here.

Application Filing Fees as of January 18, 2025 (WIPO application fees will change as of February 18, 2025):

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Possible additional charges for applications to register trademarks:

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Statement of Use fees for applications based on an intent to use a mark in commerce:

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Fees to Maintain Your Registration:

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Petitions and Letters of Protest Fees:

The last thing any trademark holder wants to receive is a cease-and-desist letter from an attorney representing a brand that claims your mark is too similar to theirs. However, trademark holders can at least feel some relief that a number of these intimidating cease and desist letters are, in fact, fabricated shakedowns and not legitimate claims of trademark infringement.

All bark, no bite

Much like the USPTO impersonation emails discussed in Scam Series No.1, scammers have become quite adept at mimicking the formatting, letterheads, and even the writing style of law firms in these fake cease-and-desist letters. However, trademark holders can remain vigilant by evaluating the situation as follows:

1. Review the letter itself for obvious flaws.These could be spelling mistakes (more common than one might imagine),incomplete information about the supposed prior rights holder and their mark, or significant emphasis on urgency such as a 24-hour deadline.

2. Even if the letter seems to come from an attorney and legitimate firm, research both the attorney and the firm. Review any firm websites listed (e.g., the domain in the email address) for similar issues like typos, odd or missing information, AI-generated images, etc.Research the attorney who supposedly wrote the letter—look at their profile on the firm site and compare it to social media profiles like LinkedIn, reverse image search any headshots shown on the firm site, check the state bar to see if they’re actually listed in the state the letter claims they’re from, and see if any other information available online drastically differs from the information on the supposed firm’s site.

3. Like any other product or service, check reviews for botted or fraudulent ratings. Are the reviews totally 1-sided (all 5stars)? Were all the reviews submitted around the same time? Are the re-recurring phrases in a number of the reviews? Ask yourself questions about what makes a reviewer legitimate and how some reviews may fall short.

Again in the same vein as the USPTO impersonation scams, a trademark holder should bring any letter claiming infringement to their own attorney for evaluation. If all the signs point to the letter being a scam, either the victim or their attorney can report the incident to the state bar where the letter supposedly originates from, report the issue via an online form for internet crimes at www.ic3.gov, or contact the victim’s state attorney general.

Evolution of the Scam and USPTO's Response

This particular scam is the latest evolution in a series dating back to 2017, when a flood of trademark applications were filed at the USPTO with fraudulent specimens. Specimens, proof of the applicant’s use of a product or service in commerce, must be submitted before an application can proceed to registration. Bad actors would take an existing photograph of a product from online and digitally replace the existing trademark with the applied-for mark and submit that as a specimen. The USPTO feared that this practice could result in marks being registered that were not actually being used in commerce in the US, which could threaten the integrity of the US Trademark Register.

This led to a persistent game of Whac-a-Mole® between scammers and the USPTO, as the government implemented several security measures to try to defend against the fraudulent specimen issue, and then against other issues as they occurred. Nevertheless, new types of scams keep cropping up.

1. In August of 2019, the USPTO implemented the U.S. Counsel Rule, requiring any non-U.S. applicant to file via a U.S. attorney. The USPTO reasoned that since the fraudulent specimens were primarily coming from foreign applicants, this new requirement could potentially curb the issue.
2. Toward the end of 2019, the USPTO required a uspto.gov account to access trademark application forms. This provided more accountability as to who was actually filing the applications. While the fraudulent specimen issue reduced over time, the USPTO still found themselves dealing with hundreds or thousands of applications filed by trademark mills, companies full of non-attorneys who defrauded applicants into thinking they were being represented by competent counsel. These applications were often full of significant issues.
3. Eventually, attorneys had to start including their bar license numbers, state of registration, and year of licensure with trademark applications. This led to many bad actors reaching out to US attorneys via LinkedIn to ask if they could essentially “rent” their credentials in order to file massive numbers of applications.
4. In August of 2022, the USPTO began to require all uspto.gov users to verify their identity via id.me in order to file trademark forms. Support staff, such as legal assistants, paralegals, and law clerks, had to be sponsored by a verified attorney to access the filing system.In January of 2024, the id.me verification requirement was rolled out to cover support staff as well.

While these identity-verification methods may initially appear robust, the process of drafting an application itself leaves room for exploitation. When a filer reaches the “Attorney/Correspondence” section of an application, nothing actually prevents them from typing any name and bar number for the attorney. While examiners do check for attorney credentials during the application review process, this system is by no means infallible. The USPTO recently told ABA Journal that there have now been 30 documented cases of attorney names and credentials being listed on applications they did not file. One attorney, who has never practiced trademark law, had her name listed on over 2,300 applications!

These scammers impersonate U.S. attorneys in order to extract fees from unsuspecting clients and fraudulently file their trademark applications, but then disappear and allow the application to fall by the wayside. These scammers generally do not perform any sort of due diligence when filing the marks and the applications they file are often refused for some sort of deficiency or obvious conflicting mark. Applicants who expect to have an attorney who can handle such a refusal are then ghosted; these applications generally abandon due to failure to file a response. 

The victims here are two-fold: the clients who waste time and money investing in a doomed trademark application filed with fraudulent credentials, and the attorneys whose names are attached to these slapdash applications. 

Applicants seeking to avoid this situation should verify that their attorney is who they say they are. Make sure to check your attorney’s contact information online to ensure they are who they say they are. Be suspicious of unbelievably low filing fees for trademark applications; if it seems too good to be true, it often is. 

Attorneys should perform regular trademark searches for applications listing you as attorney by searching AT:(("FIRST NAME LAST NAME"~2) OR ("LAST NAME, FIRST NAME"~2)). If you see marks you don’t recognize, report the issue to [email protected].

As is the case with scammers in many aspects of our lives, trademark scammers often attempt to solicit payments from trademark holders and attorneys alike by providing official-presenting information, frequently with some form of fabricated urgency. They hope that the recipient will accept the charge at face value and pay up to avoid these supposed risks to theirs or their clients’ trademarks. These impersonators often reach out to applicants via phone, email, and mail.

Phone Calls:

The genuine USPTO will never call you directly to request a fee of any kind. Even if your phone identifies the call as originating from the USPTO, if they’re asking for a fee, it’s not the trademark office.

This trick is called phone number spoofing, and it makes modern scammers particularly dangerous. The USPTO has put out some valuable guidance on this issue, noting that they will never call from a classic toll-free number like 800 or even the main “contact” number, as this number is only used to take calls as opposed to making them.

So be skeptical if you do receive a call from someone who claims they’re with the USPTO. Remember: if an attorney filed your application and is listed as your representative on your application, the USPTO is actually not even allowed to contact you! If someone “from the USPTO” contacts you as a represented applicant, make sure to tell your attorney right away. 

If you did file your application without an attorney and you get a call from the USPTO, it’s a good idea to get the caller’s name and law office number and ask if you can call them back. Once you get off the phone, you can verify via the USPTO’s employee locator (https://portal.uspto.gov/EmployeeSearch/) whether that information is correct. If so, you can use the phone number listed for that employee on the website to contact them. Alternatively, you can call the Trademark Assistance Center at 1-800-786-9199 to confirm the employee’s identity. The examining attorneys at the USPTO are very aware of the trademark scams occurring right now, and will understand if you want to verify their identity before speaking with them.

One way to try to prevent future scam calls is to avoid putting any phone number on your trademark application, as this is not actually required. While scammers maystill try to reach out to you via phone even if your number is not listed on your application, leaving it off reduces the likelihood of it occurring.

E-mails:

Scammers may also pose as the USPTO via email. Many of these communications claim that a trademark holder hasn’t paid some part of their application or maintenance fee, or that a conflicting trademark has been found through a search and the trademark holder must pay a fee to resolve the issue. These emails can be dismaying to receive as a trademark holder, and sometimes even attorneys may brush past red flags when scammers roll out an official letterhead and 24-hour deadline.

If this happens, keep in mind: any emails from the USPTO will end in “@uspto.gov.” You will primarily only receive USPTO emails from 3 main email addresses, which are used to notify mark holders and attorneys of changes or updates to an application or registration: [email protected] for office actions requiring a response, and [email protected] and [email protected] for procedural status updates like Notices of Allowance, Notices of Publication, Registration, and Maintenance reminders.

If you are not represented by an attorney, you may also receive an email from a specific examining attorney asking for your authorization to make specific amendments to a specific application. Such emails will be from addresses containing an examiner’s first and last name and ending in uspto.gov. Any other emails purporting to be from the USPTO, and particularly any official-looking emails requesting fee payments, are likely scams.

Letters:

Finally, last but not least, scammers often target trademark applicants and registrants via physical letters. These often are sent by entities with official sounding names which sound similar to the USPTO and will request additional payments to “publish” your application or “renew” your registered trademark.

If this happens, check over the letter carefully. Actual official correspondence relating to your trademark application will only come from the USPTO or the United States Patent and Trademark Office, which is based in Alexandria, Virginia. Variations on that name, such as Trademark Renewal Service or Patent and Trademark Bureau, are not legitimate. Scammer letters will also often include small misspellings of an office name, or will include fine print disclaimers indicating that they are not actually a federal agency.  

You can also look up names of scammers and examples of misleading solicitations on the USPTO’s website at https://www.uspto.gov/trademarks/protect/examples-fraudulent-misleading-solicitations.

Remember, if you are represented by an attorney, make sure you tell them about any attempts that are made to contact you and talk to you about your trademark application so that they have all the information they need to keep you and your application protected.

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.

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.

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.

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.