Shannon: Hey guys, welcome to the webinar. My name is Shannon Roddy. I’m the founder of Marketplace Seller Courses, online courses, resources and tools for brand owners, inventors and private labels selling on Amazon. I have with me today a special guest Joseph Chu. Joseph is a registered US patent attorney with the United States Patent and Trademark Office and the principal of the intellectual property law firm JCIP based in Los Angeles, California.
He was also selected to be part of the California Rising Stars multiple times, a distinction based on high-degree of peer recognition and professional achievement. JCIP specializes in all aspects of patent, trademark, and copyright prosecution, intellectual property litigation, as well as acquisition and licensing transactions. Joseph graduated from the University of Southern California and earned his J.D. from the University of Denver Sturm College of Law in Denver, Colorado. His only challenge is that he is a surfer trapped in a lawyer’s body. Joseph, welcome to the webinar.
Joseph: Hey guys, how are you? Hey, Shannon.
Shannon: Joseph, I’m really excited to have you here. This is part of the bigger conversation that we’ve started with previous webinar’s participants. So we have talked about Enforcing Trademarks on Amazon, it was one of our webinars. We did another webinar with another attorney called Creating a Legal Framework for Distribution and Enforcement on Amazon. So, if you’re watching this and you haven’t seen those, I recommend going back and watching those after this webinar is over.
But today, we’re going to be specifically we’ll be talking about how to get a trademark. It’s one of the most oft-overlooked things I see businesses all the time. It always shocks me. It always surprises me. They’ve been going for 10 years and I’m like, “Where is your trademark? You don’t have a trademark. You have no brand protection. You have no protection over your company whatsoever.” And it’s one of those things that we just want to provide information. I think a lot of people, it feels overwhelming. It feels really confusing. It seems like a little murky or it’s going to be super expensive. They’re not sure how to do it. And all of those are obstacles that prevent them from getting started.
So, our goal today is to walk them through the basics of understanding what the trademark is, how to go into the process, different options for applying and how they can make that process that might seem a little convoluted or overwhelming and really simplify it. So Joseph, thanks – thanks again so much for being on the webinar today.
Joseph: Thanks for having me, Shannon.
Shannon: So, let’s start in brief dive right in, give us a brief overview, what is a trademark and why is it important?
Joseph: Sure. So, a trademark basically, a trademark is a brand. It’s – the brand that you’re selling with the goods and services or your offering. So basically, there are three types of intellectual property and we’re not going to get into the other types of intellectual property right now. But really briefly, trademark is basically, for example, if you think of Nike, for example, you know when you see the name or the logo, the Swoosh logo, you know exactly the source of that product and that’s Nike, Incorporated. So, that’s basically it. So when you’re selling goods or services, you are – the trademark offers you know the protection of the brand name. That’s basically what it is.
Shannon: And a lot of it comes down to what the customer can expect to receive when shopping from that place or buying that product. If I throw up a hamburger joint, I can’t use the McDonald’s big M sign because people are going to think it’s McDonald’s and they’re going to think they’re getting the 99 set menu and all those things. So, those are all part of that trademark enforcement, is that correct?
Joseph: Correct. So, and also when you think about the mark is not only a – it not only identifies the source of the goods and services, but it also talks about the level of quality. So, for example, when you see McDonald’s or In-N-Out Burger or even Gucci, you know the level of quality associated with it. So, that’s why you want to protect your trademark by registration with the USPTO, the United States Patent and Trademark Office because it also talks about the level of quality of your products. So you don’t want anybody else to start making counterfeit products using your trademark and they offer a lot lesser quality not only are they taking the market share but also it diminishes the perception of your brand.
Shannon: Absolute – real quick, we didn’t talk about this ahead of time, but can you briefly talk about the two different types of marks, the design mark and the word mark and the difference between the two?
Joseph: Yes, definitely. So, there are two types of trademark. One is called the word mark and that’s just the wording itself. And that’s just, you know just the word. It doesn’t have a logo. It’s a standard character that protects the literal portion of the mark. So, for example, some marks have a combination of word and a logo, a drawing, for example.
So, a word mark is just the wording itself and it protects the literal portion of the mark without claims to any particular font style, color, logo, text and it offers the broadest protection because let’s say you get it registered and you want to enforce it against a third party infringer, it doesn’t matter how the third party’s mark looks. And it can have you know color, they have cartoon characters as long as that literal portion, the wording itself is there. If you own a word mark registration, you can enforce your trademark rights against that third party.
Now, a design mark is a different type of mark. It protects the stylization of the mark so – which includes font style, color, any logo or even additional wording. A design mark, it’s different because let’s say, you have a particular design that you use as a logo and a third party uses a confusingly similar logo but a different wording altogether. Then even though you know the wording is different that person may still infringe your mark because the look, the look itself of the mark, the logo looks very similar.
Shannon: So this could be like the word Converse for the shoes as well as like the Converse logo or Nike would be the word mark and the Swoosh would be the design mark, right? So, if somebody does a Swoosh like very similar even if they call it something fully different it doesn’t matter. You’re infringing on that mark.
Joseph: Correct. Correct. So one example I can – one example that I can think of is really is maybe a Pepsi logo. You know the unique Pepsi logo. Let’s say someone uses it with a different word but it has the Pepsi logo then you know that person maybe you know infringing on that.
Shannon: In what cases would you recommend doing one versus the other or both, for a brand? So again, a lot of our audiences are brand owners, they’ve got a product line of goods, they’ve got their brand name and then they typically have a logo associated. Can you provide a little inside recommendation there?
Joseph: Sure. I would always recommend if you’re a first time, you know if you don’t have any registration, the broadest protection you should get, first of all, if this is your first trademark registration, would be the word mark because it protects the name, the brand name itself. Later, if you – of course, depending on your cash flow if you have enough cash flow to do both you should recommend both. If there’s a particular design that you’re attached to that you really like. However, if it’s – this is your first registration, I would always recommend the word mark because it again, it offers the broadest protection. Anybody can you know – an infringing party can use however they want to use like they add drawings, or logo, or whatever but if that literal portion where you get that protection.
And also, one thing that I need to add is once you get a registration and we’ll get into the renewal later in this discussion. If you have a word mark registration, you have flexibility if you want to change the look of your trademark because the word mark is just a standard character mark, it’s just the word. You would run into trouble if you get a design mark and you register it and then when it’s time for you to renew your registration and your – the look of the design or the color may be different then you may not be able to renew your trademark registration for that design logo.
Shannon: Right. You’re just simply branding or something, new color.
Joseph: Right. But if you have the word mark, you know, it doesn’t matter. If you use it with a logo, without a logo, you changed the logo, the word mark registration gives you that flexibility.
Shannon: So, going to the next part. If I’m a brand owner, I’ve got a product line coming out, when should I start considering registering, applying for that trademark?
Joseph: Well, you should apply as soon as possible because the way – and this is tied into the process of trademark application actually. So, let me just go back and explain the process of trademark application first. When you file a trademark application, what’s going to happen is the United States Patent Trademark Office, the USPTO, they are going to assign a trademark examiner to examine your trademark application. And they’re going to look at a number of things.
Two things that are very common are one, if the trademark that you’re applying to register for looks confusingly similar to a pending application or a registered trademark or it can be to multiple registered trademarks or registered, I mean pending applications. So, they’re going to look if there’s a potential conflict with pending applications or registrations. And what happens is if you, you know if you file your trademark application late and someone else comes up with the same name or same logo, then that – and that person was files first earlier than you, what’s going to happen is that person’s application is going to be used in the in the examination of your application. So, it’s going to be an obstacle. The USPTO examiner is going to say, “Well, wait a minute. You can’t have your trademark registered because there’s someone else who’s already using this trademark.”
So, it’s always recommended that you file as soon as possible at least if you know if you’re set on, again I’m recommending that you protect the word first as your first trademark registration because as you know that’s your brand name. If you have come up with a particular brand, a particular name that you like, I would suggest that you apply as soon as possible. Although it is also recommended before you spend the money on applying if it – if the sound is not that unique because some people you can kind of tell right off the bat that the potential brand name is probably not that unique, not distinctive. It’s recommended to conduct a search on the USPTO database beforehand to see if there’s someone who has applied or registers a confusingly similar name.
And if you – if you’re really early in the process of building your company and your business, your brand name and you’re not – you have not spent too much resources investing in the name, for example, you have not made any packages of the name, or you haven’t started making you know products with that name on the products. It’s a good idea to do the search so that if that name is not available for registration then you can pick a different name.
And I think that one thing that we haven’t touched on earlier Shannon is the importance of registering a trademark. A trademark, you know a trademark is acquired by common law by actual use. So, some businesses never register their trademark and they continue doing business for years without ever registering their trademark. However, there’s a severe legal limitations when it’s time for you to enforce a trademark that was never registered.
A registered trademark is enforceable in all 50 states and US territory. So for example, Porter Rico, St. John, all these US territories, if you have a federal registration with the USPTO you can enforce your trademark against an infringer in any of those states. Now, if you never registered your trademark, you are limited to a particular geographic area. So for example, I’m here in California. I own a business. I never registered my trademark but I have a trademark that I’m using and someone in New York is using a confusingly similar mark, it’s very hard for me to enforce my trademark rights over there because you know the infringer is going to say, “Well, wait a minute. I have never heard of you. I developed this trademark name, this brand name independently.” So, it would be hard for you to enforce a trademark for someone in a different area. So you’re kind of limited to that particular geographic area.
Shannon: Let’s talk a little bit about categories because this is another thing – a trademark just because you have a trademark doesn’t mean that it’s like that one trademark across all things. But can you talk a little bit about how the USPTO looks at a trademark for specific categories or if you’re applying that you actually have to select category, say, this is the type of product that I’m going to be creating.
Joseph: Sure. So, every trademark application and eventual registration if you get it, you have to identify – it’s not when you register a trademark, it’s not like you get one trademark that covers everything under the sun. So you have to identify what kind of goods or services, or/and services that you’re using the trademark with. So, for example, you have – let’s say, you’re selling shirts. You have to identify in the application and eventually in the registration that you’re selling the trademark with clothing goods, namely t-shirts, hats, shoes. And the convention that the US system uses as well as other international systems, so if you file that trademark applications outside of the US is that you have to identify the goods and services and each good or services is identified in particular classes.
So for example, goods are identified in classes one through 34. Services are identified in classes 35 through 45. So, for example, clothing products, you’re selling products, clothing products, you would identify those you know clothing, shirts, t-shirts in class 25. Those are categorized in class 25. Electronics, for example, electronics are categorized in class nine, most of them. I think some lightings are in different classes, I think class 11 I think. But you know so, you have to – so, each type of product, each type of service is categorized in different classes.
Shannon: So, based on that, is it possible that if I have an apparel company that I could potentially have the same trade name as a company that sells pharmaceuticals because there’s very likely chance that those are not going to be confused? Is that possible that somebody would have the same trade name as somebody else as long as the categories were completely different?
Joseph: Yes, yes, definitely. So for example – and this is going back to the process of trademark application that I was alluding to earlier. So, when the USPTO examiner examines the application and they look for a potential conflicting pending applications or registrations that have similar marks, confusingly similar marks, they’re not just going to compare the marks by themselves side by side. They have to look at a number of factors. So, they have to look at the similarities of the appearances of the marks, spelling for example. They also look at the types of goods and services under the conflicting marks. They look at the trade channels for example, the type of consumers, commercial impressions. Those are number factors they’d look at.
So, for example, let’s say you’re – you have one mark, ABC and you’re selling t-shirts. And then there’s a – and then you filed the application. And then there are some, there’s another trademark that’s already registered ABC for dental services, for example. In this case, even though the marks are identical, it’s very likely that the examiner is not going to find a likelihood of confusion because the goods and services are different, the trade channels are different, you know people who buy t-shirts are not going to go to the dentist and vice versa. Commercial impressions are different. So, you know so they look at the number of factors, not just one.
Shannon: OK. Let’s talk briefly…
Joseph: And so…
Joseph: You know if there’s no confusion there. If there’s a confusion – and another thing that the examiner looks at is whether the trademark, your trademark is descriptive of the type of goods and services that you’re offering. So, what that means is basically like let’s say if you’re filing a trademark application for t-shirt online company and you’re actually selling t-shirts online. You will not be able to get that trademark registered because it’s considered descriptive of the goods and services that you’re selling under the mark.
Shannon: Got it.
Joseph: Now, if those two – you know, those are the most two common things that the examiner will look at. If there’s no issue there and there’s no issue on the others things then you will get your trademark registered.
Shannon: OK. Well, let’s talk briefly about the use of the TM versus the circle R registrations. So, TM is typically indicates intent to trademark versus the circle R you can only use after you’ve received the registration. Talk briefly about how people should use that and the switchover between the symbols.
Joseph: Correct. So, if you have not registered your trademark, you should at least use the TM symbol. That gives a public notice that you are already using the trademark with your goods and services. Again, some people never register their trademarks, under common law, they have acquired priority of use because they started using it and it’s based on actual use. But you cannot use the R symbol because it’s not registered with the federal government yet. You can only use the R symbol after your trademark has registered with the USPTO.
Shannon: And is it important – because that’s – I’ve worked with companies that I go on their website and they’ve still got their logo with a little TM. And they’re like, “Oh, we received the registration years ago.” How important is it to switch over to let people know this actually registered and to update the symbols so they’re letting you know customers, as well as competitors, know that this is actually a registered trademark at that point.
Joseph: It is important because – and this is a different issue when it comes to enforcement. So, for example, after you get a registration and then you want to enforce your trademark against an infringer, having that R symbol will have some effect on the monetary damages that you can ask from the infringer. It has some effect on the monetary damages.
Shannon: Let’s talk briefly about using commerce. This is another thing that comes up, just really explain briefly use in commerce then we’ll kind of dive into timeline and stuff.
Joseph: Yes. So, the use in commerce, again, if you if you have started using the trademark, that’s your use in commerce. So, if you have sold you know your products in the US marketplace that’s considered your use in commerce. So, let’s say when you filed a trademark application, at the time of filing, you have not started using your trademark in commerce in connection with the selling of goods or services, you can do that. So when you file the trademark application, you just file it first and then you work on y your products and you’re working on marketing or developing your products, you can do that. So, you can file right away before you have started using the trademark in commerce.
But, let’s say after the examination, everything goes through and you get a Notice of Allowance before you can obtain your trademark registration, the USPTO requires that you have actually started using the trademark in commerce. So, you know you cannot just get a trademark registration without ever using it. Some other systems in other countries allow you to do that. You can file first, you may never use it but that resulted in I would say the trademark trolls, registering the trademarks as many as possible and then they try to sell it.
So, in the US it doesn’t work that way. You have to start using your trademark in commerce before you can get it registered. So, after you get a Notice of Allowance, then you show your evidence of use. You provide the date of first use which is the date when you first started selling your products or services with the trademark.
Shannon: And that could be in retail or it could be on Amazon, on your website, as long as your product is physically available for sale. And you…
Shannon: And somebody has purchased that you’re shipping the order and that’s simply is confirmation.
Joseph: Exactly. Exactly. And it doesn’t have some – you don’t have to have for example a physical store like a Victoria’s Secret at the mall or something like that. As long as you have some sales connected with your use of the mark, you’re selling the products under the mark then that’s considered used. So…
Shannon: So, the principle here is if you’ve got a product, an idea for a product, you don’t have to wait till you have that product ready to sell before you start registering your trademark. You should apply now and then once you get the allowance to use, you can show use in commerce and you know finish that off.
Joseph: Correct. So, if you come up with a brand name you know and you – but you have not started selling the product yet, at the time of filing the application, you can do that. But once you get a Notice of Allowance from the USPTO meaning that you’re allowed to have the trademark – your trademark is allowed to register. You have to start using the trademark with the goods and/or services that you’re selling. And you’d get six months from the date of the Notice of Allowance to start using your trademark.
But if during that time because understandably production of goods, you know making new packages or marketing the products that could take time, the USPTO gives you extensions of time. So, for example, at the end of the six-month period of the Notice of Allowance you still have not started, you’re still not ready to launch your product yet, you can get an extension. An extension gives you another six months and it can get up to five extensions, each one in six months at a time. So you get technically around what, three years?
Joseph: So you get three years to start using your trademark with the goods or services that you’re trying to register.
Shannon: And we’re about to get into the specifics of how you actually go about starting to registration process but the last question I’m going to ask is how long does it typically take? So, people are thinking about getting their trademark. What’s the timeframe that is ballpark? Again, there can be lots of obstacles which we’ll get into but what’s the general timeframe that you can reasonably expect their trademark to either come back as approved or denied from the USPTO?
Joseph: Sure. So, the broad range is between six to 18 months. Those are very typical and it depends on a number of things but recently I have seen some applications that I’m handling receive Notice of Allowance within four months so that was really quick.
Joseph: But you will not get your trademark, assuming there’s no issue, you won’t – it’s very unlikely you will get your trademark registered within two or three months. I have not seen it. Typically, it’s between six to 18 months but it can be as fast as four months the ones that I have seen.
Shannon: Yeah. One of the companies that we work with, we typically see the between the nine to 12-month range, I’ve seen those with the…
Shannon: …average in the middle but it takes about a year. So again, if you have not started your trademark process or application, you should start that immediately because of the amount of time that takes and the lead time. So, Joseph, once people know they need a trademark. They want a get a trademark. What’s the process for actually applying for a trademark? How does that process work?
Joseph: Yeah, so the process basically you know you can talk to you know if you talk to a trademark attorney, basically what happens is you give them a trademark they have in mind and you give them the list, a complete list of goods and services that you are going to sell or if you’re already selling you know a complete list of goods and services. And then again, as we discussed we checked the – we call it the identification of goods and services, what is basically you have to describe properly what the goods and services are.
For example, if you’re selling clothing products, you can’t just say clothing. It has to be a little bit more detailed under the US system. Some other systems are not like that. In other countries, they could be a little bit broader. In the US, unfortunately, we’re a little bit narrower. So for example, we look at let’s say clothing and I’ll have to ask you what kind of clothing? Shirts? Pants? We have to identify those more specifically.
And also, you know the trademark attorney will take a look at the mark to give you an idea whether the mark is descriptive. I gave you an example and that was a real example too from a potential client that I have. If you want to do the t-shirt online for a t-shirt you know selling t-shirt online.
Joseph: That would not work. So when you – after that you know everything looks good and the thing that we talked about the average pendency of trademark application, you can – there’s no guarantee but you can always try to make the application in the best condition as possible for allowance so that you don’t get rejected. It’s – you know, every trademark application is subjective from one examiner to another. Some examiners are tough, some examiners are easy but you – we try to prepare the applications of you to know in the best condition possible so that you won’t get a rejection.
And again, once a trademark application is filed, you get an examiner to examine the application and to look for a number of things. And then you know, for example, the likelihood of confusion we talked about, the descriptiveness we talked about. And then after that, if you get a Notice of Allowance depending on the filing basis. If you have started using the trademark when you filed the application then it’ll just go to registration. Well, actually, let me take that back.
After you get a – the exam is over, there is a publication period. So, after you – the examiner finds that there is no issue, it’s ready, you know the application, the examiner has concluded. The examiner, the trademark is fine, the goods and services are fine. There is a publication period, a 30-day publication period where any member of the public can oppose the registration of your mark. And this is you know an opportunity for the public to oppose your registration.
So, for example, your competitor, they don’t even have a registration themselves but they feel that they may be damaged by the registration of your trademark, they have the opportunity to challenge the registration of your trademark. They may – they will file what’s called an opposition with the USPTO and they will say that “Hey, you know, I disagree with registration of this trademark because whatever.”
And so after that, that’s a publication period or opposition period for 30 days. So, after the 30-day period is over, if nobody challenges the registration of your trademark registration, nobody files an opposition then you will get an Allowance. If at that time you filed the application, you have started using the trademark then it’ll go to registration. But if at the time of filing you have not started using the trademark with the goods or services then you will again, you will have to submit the Statement of Use, which is declaration that I am using the trademark in commerce and submit evidence of use typically in the form of photographs, JPEG files showing the trademark on the packaging or on the product itself.
Shannon: Now, let’s talk because you mentioned this and brought up about a trademark getting denied. What are the most common reasons that you see trademarks getting denied?
Joseph: The most common reasons are the likelihood of confusion. So, for example, your mark is confusingly similar to another trademark that’s already pending or registered. And one thing that you should know is that the USPTO only examines the application, your application in view of what’s already filed with the USPTO or registered with the USPTO. They’re not going to look at trademarks that were never registered in every state. That’s not going to happen. So, they just look at whatever it is in the USPTO database.
So they’re going to look for likelihood of confusion, that’s the most common rejection. Another is the descriptiveness that we talked about. It cannot be descriptive of the goods or services and in some cases, it cannot be descriptive of a particular geographic area. So, for example, if you own a store and in Chicago, Illinois and you want to open a mall, Illinois Mall, you know? You can’t have that because it’s descriptive of geographic area.
And also, the most common issue is the identification of goods or services. A lot of people who filed the application themselves, they don’t know that there are specific requirements when you describe the goods and services. And this is very common that it’s either incorrect or too broad or in different, in the wrong class, for example. So, those are the most common that I have seen.
Shannon: In terms of rejection. Now, let’s talk about some of the sort of three main avenues or channels, if somebody’s watching this or listening, they go, “OK, I want a trademark, I need a trademark. What are my options?” And kind of the three that sort of that span in the gamut in terms of investment on your time or financial investment. Those would be one you can file directly with the USPTO, there’s sort of like a self-service application. You can use a service like LegalZoom or you can hire a trademark attorney. Can we just go through those three for example and talk about some of the pros and cons and what might be best for people at different positions or different stages in the business?
Joseph: Sure. Sure. Of course, you know I would not recommend filing the trademark application yourself because trademark application, some people have been able to file them themselves but you know it’s – trademark application with USPTO is a very, I would say you know intricate process that if you don’t do it correctly you will get rejection and then you will have to – and when you get a rejection it’s not a – when you get a rejection from the USPTO examiner, it’s not the end of the road. You can always respond and then the examiner is going to come back whether they agree with your position or they reject you again.
So, it’s a process. When people file themselves, a lot of times they mess up on one thing or another. Maybe the description of the mark or identification of their services and then they’ll end up you know either re-filing it again or having to hire an attorney to file a response. And, so that’s not the recommended route.
I have never used the online trademark filing systems. I’m sure there are good ones out there. But you have to be aware that some online filing systems, they don’t do the preliminary analysis that an attorney would do. So for example, you just file, there’s a form that you fill out. You put in your mark and then you just dump in all the goods and services that you can think of and then they file it for you. And there’s no assessment, initial assessment, whether the mark is descriptive or not. Those are the kind of advice that you would get from an attorney. And you know whether the goods or services are placed in the right class, whether they’re described correctly on the form.
And then what happens is even though the initial filing is cheap, these companies will make their money off of the rejections. So, you know you get a rejection because you just put everything they can think of without any review. They just file it. And then you get a rejection. And then now they’ll tell you, “OK, well, now you have to you know file a response.” Whereas you know – and then so you might end up paying more money in the backend.
Joseph: Now, with the use…
Shannon: Filing for you with your response, it’s sort of like an upsell for an additional charge of…
Joseph: Right. So, there’s this – you know, there are potential issues and like I’m sure some of them are pretty good actually. I can’t think of – I’m sure there are some. I just need to look into them. But some of them you just have to be aware that if you – they just tell you to fill out the form and dump everything, all the information in then that might not be a good idea for you to use. You might want to skip those companies.
But a trademark attorney would be able to give you a more in-depth advice. It’s not a guarantee when you hire a trademark attorney, it’s not a guarantee that you will get zero rejection because again, every trademark examination is very subjective which may vary from one examiner to another. But at least trademark attorney can give you an advice on the mark, “OK, this is probably not going to work. Or, the goods and services are probably not going to – you have to revise it a little bit.” They can give all kinds of advice to prepare the application in best condition possible so that you reduce the chances of getting a rejection. It’s not a guarantee. But you reduce the chances a lot of the chances.
For example, some of the things that USPTO examiner sometimes comes back with as a disclaimer of one particular word in the mark. For example, bar and grill or something bar and grill and that are something that a trademark attorney can advise you and say, “Well…” He can say, “You might get a rejection on the bar and grill, ABC bar and grill but you know you will disclaim that bar and grill meaning that you know that particular – that setting alone is not registrable but as a whole it’s registrable.” So, those are like some nuances that a trademark attorney can advise you.
Shannon: Yeah. What are some of the things that people need to be aware of for actively maintaining a trademark? Because once you get the trademark, it’s not like you’re done, you wash your hand. It’s good for life. What are the things that people need to be aware of to maintaining that act or trademark over the life of their brand or their company?
Joseph: Right. Right. So, a trademark registration, you can keep it as long as you continue using it. So that’s the rule. You have to continue using the trademark in the marketplace with all of the goods and services that you identify in the registration. So, after the trademark registers, you have to file maintenance documents between the fifth and sixth year after the date of registration, between the ninth and tenth year, and every 10 years after that.
So, between the – you know, after your – the registration date of your trademark, the fifth and sixth year, you have to file a Declaration of Use saying that I’m still using the trademark. And between the fifth and sixth year, you also get an opportunity to file what’s called an Incontestability Statement. What it means is basically, the trademark owner make the declaration to the trademark office, the USPTO, that I have been using continuously and exclusively this mark in the marketplace in the last five years so now my mark has become incontestable. You can do that together between the fifth and sixth year so the Declaration of Use and the Incontestability Statement.
An Incontestability Statement is very good because once that’s acknowledged it’ll be very hard for third parties to challenge validity of your trademark. Because if you get into a lawsuit, what’s going to happen is the alleged infringer, they’re going to – so these are two things. One is that they’re not infringing. And two, most likely they’re going to challenge the validity of your trademark registration. So, once you get an Incontestability Statement, it will be harder for them to challenge the validity of your trademark registration.
And then between the eighth – I mean between the ninth and tenth year, you’ll have to file another Declaration of Use with renewal application. And then after that, you know after the ninth and tenth year, you only have to do it once every 10 years. And you can keep it – and you have to submit evidence of use during – for those filings.
Shannon: And what are the probably they – again, we discussed them on previous webinar about filing trademark infringements on Amazon but what about off Amazon? What about if there’s this other companies that are using your brand, what are things that people need to be aware of to know “Hey, this company popped-up, they’re using our logo or something looks exactly like our logo or they’re using our brand name” what are things people need to know, brand owner, from a brand owner perspective, how do you enforce that trademark from a legal standpoint?
Joseph: Yeah. So and also, that’s a good point because once your trademark registers, you can also have – you can also register a trademark with Customs and Border Protection, the CBP. And what happens these guys, they are very trained in watching incoming counterfeit products. So, you know and that’s one way to enforce it. So, if there’s a shipment from abroad that infringes your trademark, they will let you know and they will stop shipment at the border and they can’t come in.
But short of that, if you are aware of someone that’s using your trademark, your registered trademark, of course, you should take action as soon as possible. You can send a cease and desist letter and saying that “Hey you know, you’re using my trademark, my registered trademark and I have invested a lot of money into this so you need to stop using it.” Because you cannot purposefully wait too long, once you’ve become aware of the infringement under the legal doctrine of laches. It’s basically what it is, it’s basically you can’t wait you to enforce a trademark rights against an infringer for too long because it’s not fair for someone else.
So, for example, like let’s say, you found someone, you find out that someone is infringing your trademark. You’re aware of their business and you wait on it for five, 10 years. Now, that person has invested a lot of money, making a lot, spend a lot of resources. If you want to try to enforce your trademark rights against them you may not – you may be barred from doing so by the court. You can file the lawsuit but the court might say, “Well, it’s not fair to their person if you have become aware of the activity a while ago.”
So, this is kind of like the statute of limitations when you want to bring a lawsuit against someone and you’re given, you’re prescribed a certain time period when you can bring the lawsuit, if you go over that time limit, you cannot bring a lawsuit. For trademark infringement, under the federal law, the Lanham Act, there’s no statute of limitations per se but there’s that legal doctrine of laches where you know by equity, by fairness, you cannot wait on it too long. So, the best suggestion is if you are aware of someone is infringing an activity to take action on it as soon as possible.
Shannon: Yeah. So, Joseph, you provide trademark service for companies whether litigation or application. Talk briefly about your services, what you guys provide and then also how people can contact you if they have more questions.
Joseph: Yeah, definitely. So, we’re a boutique IP Law Firm in Los Angeles. We handle patents, trademarks, and copyrights. And again, we handle patent applications, trademark applications, copyright applications with the USPTO, US Copyright Office and we also do litigation so we help enforce someone’s patents or trademarks or copyrights or we defend. So, we provide both services. And you can contact me at Joseph@jciplawyers.com. My website is www.JCIPLawyers.com. So – or you can call me at 323-983-2293.
Shannon: Wonderful. And we’ll put that information, those links for the website below the webinar. But again, Joseph, thank you so much for being here today. I appreciate you going over, breaking down and demystifying trademarks and how to make that process a lot simpler for everybody.
Joseph: Thanks, Shannon.