Frequently Asked Questions (1 of 2)
The attorneys at The Law Offices of Joseph C. Messina want to be your resource for inquiries regarding intellectual property. We do our best to answer every question promptly and thoroughly. Some of our most frequently asked questions appear below with our responses. We hope you find the information useful.
- What do I Have to do to Maintain my Federal Trademark Registration?
- After Acquiring a Federal Trademark Registration, if I Discover a Competitor Using a Similar Mark, What Can be Done?
- Under What Circumstances Would I File a Domain Name Dispute?
- Once You Acquire a Federal Registration, is it Possible to Lose Your Trademark Rights?
Legal rights in a federal registration can last in perpetuity, if the trademark owner continues to use the trademark and complies with the requisite post registration maintenance requirements of the USPTO. In the United States, the term of a registered Mark is ten years. This is calculated from the date of registration. Registrations and renewal certificates issued prior to November 16, 1989 are for a term of twenty years. Although, during the first ten-year term, the USPTO mandates that you file an Affidavit of (continued) Use between the fifth and sixth year, measured from the registration date. You may engage our firm’s services to conduct the post registration filings on your behalf.After Acquiring A Federal Trademark Registration, If I Discover A Competitor Using A Similar Mark, What Can Be Done?
We would evaluate the use of the potentially infringing trademark. If we determine that there is a likelihood of confusion on the part of the consumer, we will write a Cease and Desist letter to the infringing party. We would also write a Cease and Desist letter, if we believe there is a counterfeit situation, a case of dilution, unfair competition, or other infringement of your rights. We would strive to resolve the case through settlement negotiations, our objective is to utilize the most cost-efficient means available for resolution. If the negotiations break down and the infringement continues, we will then counsel you in regards to your litigation alternatives, such as an injunction to bar future infringement or the availability of treble damages and reasonable attorney fees.Under What Circumstances Would I File A Domain Name Dispute?
You would file a complaint with ICANN (Internet Corporation for Assigned Names and Numbers) if you have rights in a trademark and a third party (in bad faith) uses your trademark as part of its domain name. You can also bring a complaint against a third party for using a domain name that is confusingly similar to your Mark without legitimate interests in the Mark. The costs for filing for arbitration in a domain name dispute are substantially less than the costs of taking a case to court. An ICANN arbitration allows you to receive a decision in a short period of time (sometimes as few as 60 days).Once You Acquire A Federal Registration, Is It Possible To Lose Your Trademark Rights?
Yes, trademark rights can be lost through abandonment. Once a Mark is abandoned, a third party may adopt it. One may lose their trademark rights if they do not continue to use their trademark in interstate commerce with the goods and/or services identified in their trademark registration. There are other ways, to lose one’s trademark rights. There can be an improper assignment, a non- compliant licensee and a lack of control over the quality of goods sold under the Mark, or a material change to the Mark when used in commerce. Lastly, if a trademark becomes generic, you may lose your legal rights to the trademark. If the Mark becomes the common name for the product, it will no longer function as a trademark and the registration can be cancelled. We have seen this occur with the Marks ZIPPER AND ESCALATOR. However, if the Mark becomes generic for only some of the goods or services, then the registration can only be cancelled for those goods and services impacted by the “genericide”.
To set up a free consultation, contact the Law Offices of Joseph C. Messina or call us at 914-381-2728. We offer experienced trademark assistance to clients in Stamford, Connecticut, Westchester County, New York, the surrounding communities including all the boroughs of New York City, and nationwide.