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Being Threatened by a Trademark Cease and Desist Notice

By Edited Jun 1, 2015 1 2

Fighting a Trademark Claim

USPTO Trademark Search
You post a video on YouTube and 6 months later after receive 30,000+ views, you receive a Cease and Desist email from someone.  As you read the email, you are confused and somewhat nervous about what you might have done wrong.  Your video is an exercise video that you recorded months ago and you’re not demonstrating any obscene gestures, so what is all the fuss about?

The Problem

The problem is the name of the video, not the content.  The email notice indicates that the name of your YouTube video contains a word that is a Trademark of theirs, they would like you change the name of your video, and they would like you to stop using the word in exercise videos. “You have got to be kidding me!” is your first reaction and your second reaction is “Oh my God, am I being sued?”

What to Do

First, you need to relax.  Easy for you to say, you’re not the one being sued.  I agree, but before panic sets in, take a couple minutes to perform a quick Trademark look-up.  I have included a section below outlining how to perform a basic Trademark review. I hope you find it helpful.
 
After your initial Trademark review, you might find out a Trademark application was filed, but a Registration number was never granted and the application is listed as DEAD.  An example of this situation recently surfaced in a Forum post on InfoBarrel about a member who received a Cease and Desist email and was asking for advice.  After performing a basic Trademark search and finding out a Trademark application had been filed, but had since been abandoned, she shared her concern that “...it is still nerve wracking, like I said, in the instance that the applicant does go through with re-filing eventually and then tries and come at me down the road..."

Even after knowing the Trademark was abandoned previously, she continues to be concerned with the possibility she could be sued later.  I mean who wouldn’t be upset knowing you potentially made a mistake that could cost you money.  Many reassuring posts were submitted, but the incident still left her wondering what to do if the individual re-filed for the Trademark at a later date and was later approved for the Trademark.

How to Oppose a Trademark Filing

The best defense is a good offense.  You can easily block a Trademark application from being approved by filing an opposition claim during the Publish for Opposition period.
 
How this works...
 
Once every 3 months, she should glance at the USPTO (US Patent and Trade Office) website for the term she is concerned about to see if the individual ever re-files for the Trademark. If they re-file under a 1A ("current use") filing, they will have to state an Initial Date of Use as part of the 1A filing.  A 1A filing is for “current use” and a 1B filing is for “intent to use”.  Many of these phony Trademark websites will file a weaker 1B filing on your behalf, for a fee, which to me is fruitless. The 1B filing is a placeholder filing and will not lead to Registration of the Trademark unless you convert the application to a 1A filing within a one year period.   So why not start out with a 1A filing to begin with?

What typically happens in this case is the 1B filing expires in one year and, unbeknownst to the applicant, the Trademark application is DEAD. An applicant will falsely assume that, since they filled out an application and have received a Serial number they “own” the Trademark.  This is not the case.  An Application Serial number is issued at the beginning of the process for every Trademark application. This is not to be confused with a Registration number that is received when a Trademark Certification (aka Registration) is issued.  Two different numbers and both are listed on the USPTO website next to a Trademark for reference purposes. A Serial number is only a tracking number and is not an approval number.

Submitting the application is only Step 1 in the process.  Step 2 begins when a USPTO Patent Attorney is assigned the Trademark for review and is tasked with the responsibility to determine if the Trademark application meets basic requirements.  The USPTO Patent Attorney then either approves the application for public scrutiny or not.  This next phase, Step 3, is known as Published for Opposition. If it's a descriptive term, the USPTO Patent Attorney will decline the application or will ask for reasons for why the term is not merely descriptive in nature.

If approved for the Published for Opposition stage, the applicant is far from being approved for Registration! This is where you can block the application by filing an opposition claim.  A few examples of opposition claims are 1) that the term is merely descriptive in nature and a common term used in the International Class applied for, 2) you have been using the term in business for several years starting on [date prior to the applicants 1A date], 3) other businesses nationally in the US have been using the term with their business since [sample dates] listing a dozen other business names and their city/state of business, and 4) the term is a common industry term and not distinctive from a product description. The goal here is to bring to light that there is a SIGNIFICANT likelihood that legal action will occur down the road to challenge the Registration and there is a real possibility this will become a burden on the court.

You will not likely be added to the applicants Christmas card list once you block their application, but an application declined is a safety net for you - and anyone else who the applicant might be elbowing for the term and search engine traffic.
 
The job of the USPTO Patent Attorney is to review applications and prevent legal battles by pro-actively finding reasons to decline applications. Their job is not to approve applications; their job is to block them. They are a reasonable and fair group, but they are extremely receptive to outside help blocking approvals, especially ones that have a potential for litigation.  Should a wave of opposition occur during the Publish for Opposition phase, they will withhold Registration if any one opposition claim is fact based.

The reason I'm remotely familiar with the Trademark and Servicemark process is I have personally applied for four (4) Trademarks over the past 10 years.  Not a lot, but enough practice to understand the basics of the process.  One application never made it off the launch pad as the term applied for was determined to be too descriptive in nature.  The three (3) other applications made it all the way through the Publish for Opposition stage and onto full Registration.  Each of th four received a Serial number, but only the successful three received a Registration number.

A few years ago I signed the rights of one Servicemark over to a local Chamber of Commerce as a gift when I served on their Board, and the other two Registered Trademarks I unfortunately dropped the ball at the 8 year mark and failed to file the necessary Perpetual License paperwork to make the marks mine for life.  Oops!  I could re-apply for the two lost Trademarks and would likely receive approval.  If I do decide to re-apply, I will definitely pay attention next time to the 8 year anniversary notice.

Researching a Trademark

To research a Trademark, go to www.uspto.gov which is the official website of the US Patent and Trade office and confirm the term in question is even a Registered Trademark.

1. In middle of the USPTO home page, you will see the word Trademark written in red and will want to click on the 2nd item in the list called “Search Marks”. 

2. On the next page, click on the 1st item on the list called “Basic Word Mark Search” and type in the Trademark in question.  When you click on the Submit Query, a list of Serial numbers, Registration numbers and Current Status for a variety of results will be displayed.

3. Click on the one you want to review and you will be able to identify who filed the application, what date the application was filed, what IC class is being protected, and whether or not the Trademark is LIVE or DEAD.

 

 

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Comments

Dec 21, 2011 9:26pm
thehigherstandard
Very nice write-up Jim. It is very important in today's environment to know what you can do to protect your intellectual property and you have certainly given a good primer on the trademark process.
Dec 22, 2011 2:26am
slimjim270
@thehigherstandard -

Thanks for the feedback. I've personally filed for 4 Trademarks and found the hardest part of the process was learning the process.

After the 1st application failed, I successfully filed and received 3 Trademarks a few years back.

Nothing like bouncing against a few road blocks to find your way.

I was able to complete the Trademark applications on my own online through uspto.gov and each process became a fun challenge.

-Jim
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