More and more people have confusing ideas about trademarks

Hello Client, recently I have noticed more and
more people have confusing ideas about
trademarks and the trademark process.
It really isn’t that hard once you understand
the basics.
Trademarks are company and product
names, logos and slogans. They are way
broader in coverage than a domain name
search, a corporate name search or a web
search on Google, Yahoo or Bing.
Rights go to those who use a mark first under
common law and/or apply for a Federal or
State trademark first.
Things that matter include SIMILARITIES in sound, appearance or meaning. Related
goods/services. Channel of distribution. Customers. Famous names/marks. Over reaching
litigious companies.
A legal comprehensive legal clearance trademark and common law search can take 3
hours each. Trademark attorney review is needed.
Some people say – “I don’t want a trademark!” Great, most companies do not need one.
But to avoid a “failure to communicate”, one must understand the 2 parts to a trademark.
1) Being LEGALLY CLEAR, under trademark law, and 2) Getting a federal or State
trademark. #1 every business needs – at least. #2 is advantageous as a mark gains
ownership and broadens rights in sound, appearance and meaning.
Please note – The USPTO and CIPO expect this work done before filing any trademark,
as by statute, they cannot for you. If another company has rights, then they have 10 years
to enforce against you.
Trademark enforcement can be executed against infringers in a lot of ways, in
addition to direct contact. Complaining where the infringer advertises – i.e. how they sell,
where they sell – i.e. channels of distribution and where they manufacture. If their
distribution crosses country borders, then a complaint to customs is effective for goods to
be blocked or seized. If they have a trademark, a cancellation of their mark is an option.
Where a complaint is disregarded, an attorney cease and desist has more power.
Being 100% sure your mark has rights over any infringereither under first use
Common Law or your own registered or pending trademark is common sense. Being
certain when they started using the mark is key. Competitive checks to ascertain reality
are needed. The Internet Archive Wayback Machine is unparalleled. See:
https://archive.org/web/.
Trademarks need to be enforced evenly. So, if you find one infringer, then you should
run a comprehensive research to find if any more infringers exist in sound, appearance or
meaning under trademark law. IF so, then your mark’s rights need to be enforced against
those companies as well. This is our 5-6 hour $400 Start-Up Package, including attorney
research review and consultation. Remember, we have 10 trademark attorneys in our
network included in our low fees. Attorney work to enforce is not included in our Start-Up
Package.
The point is your trademarks have great value to your company.When you have a
trademark you are accepting the duties and obligations of enforcement. If you neglect,
then you slowly lose rights against infringers. This is called acquiescence. If you allow too
many company’s to infringe, then you make it harder to enforce. When you ever buy or sell

a business, a strong trademark shores up its goodwill.

Since we sent the following alert on April 30, 2023, we have had 5 more clients
complain they too were contacted about the following scam. Here it is again.
There is a new phone call trademark scam starting up – as if we needed another one.
The USPTO publishes a list of 85 documented scam examples. See –
https://www.uspto.gov/trademarks/protect/caution-misleading-notices. (See more links
about scams below.)
Personally, I’d add add all the trademark services and attorneys who do not do true
comprehensive legal research as scams as well. On the border is LegalZoom who had
tried to do comprehensive research before, but lately has dumbed down their common law
searches to save $. Most who don’t try are definitely damaging their clients to make a
quick buck. When you do as many trademarks as we do, you see all the people who have
to change their business and product names because little to no research was ever done
to avoid infringement and acceptance at the USPTO. Other firms have 10 years to move
to cancel a registered trademark.
The new scam is done right after a new trademark is filed. The caller id spoofs the
USPTO main phone #. The caller says they a USPTO trademark attorney. They say they
will approve their trademark application for $225, then the TM symbol can be used right
away. They ask for a credit card payment on the spot to compete the scam.
One of our clients alerted us to this event. I reached out to Jason Lott, one of our contacts
at the USPTO. Here’s our LinkedIn exchange:
WEDNESDAY View Chris’ profile
Chris DeMassa 3:28 PM
Hi Jason, hope you are doing well. The person I was referring to above, in Sept, said
she did not want to cooperate in providing any more details.
Today, I have another one. A client of ours who just filed April 2 just told me he has
received 2 scam overtures. They seem very aggressive given he just filed a few
weeks ago. One was the WTR $1420 offer to publish in their directory. Isn’t that
World Trade Review? Our client is sending a copy.
The alarming one was a call he received from someone saying he was from the
USPTO. The # on caller ID was 571-272-1000. Obviously a spoof #! They told our
client they’d approve their trademark application for $225, then he could use the TM
symbol. Our client applied for a service mark in Class 42. Chase Bank flagged it as a
possible fraud for 3 days, until our client approved it a few hours ago. I happened to
call him about another trademark he had wanted.
Have you heard of these new fraud efforts?
Usually I have only seen trademark renewals targeted.
Thank you!
Chris 650-948-0530 -or- Zoom Anytime @https://bit.ly/TradeMarkZoomMeeting
Chris DeMassa 5:19 PM
042623 – xxxxxxxx – WTP scam letter.pdf
Hi Jason. see attached. The WTP scam letter. Chris 650-948-0530
THURSDAY Jason Lott sent the following message at 3:38 PM
Jason Lott 3:38 PM
Yeah, it’s getting really bad out there. We actually just had a scam awareness
webinar today trying to get the word out about these
scams. https://www.uspto.gov/about-us/events/trademark-scams-how-avoidthem-and-what-do-if-you-get-fooled
The phone spoofing one is fairly new, but has been circulating for a
bit. https://www.uspto.gov/trademarks/protect/spoofing-phone-numbers
The WTP scam is older, but they might be using a new address. You can see PDFs
of all the scam letters we’ve collected over the years (including two from WTP) on
our “Caution: Scam alert”
page: https://www.uspto.gov/trademarks/protect/caution-misleading-notices
It’s good you’re keeping an eye out for your clients. If it’s helpful, be sure to direct
them to our “Protect against trademark scams”
page: https://www.uspto.gov/trademarks/protect. There’s lots of good information
there.

All the best to kickstart your idea!

This still is the best trademark video ever. Even if you have seen it before, take a look
again. NOTHING is more important for your business than your intellectual property!
Crash Course Trademark Primer Video:
Trademarks and Avoiding Consumer Confusion: Crash Course Intellectual Property #5
https://www.youtube.com/watch?v=3gWaAJR5L18
We have been using this copy for over 20 years:
Comprehensive legal I.P. research is needed to make sure your trade name is
LEGALLY CLEAR, before opening, before expansion, before incorporation or
before designing your logo. Similarities in sound, appearance and meaning
affect legal availability too.

Talk to us about your ideas!

July 31, 2022 was our 30 Year Anniversary!
FACT – TradeMark Express has not had a final refusal at the USPTO in 15 years.
We have never had a refusal in Canada, or any other country ever – in 30 years.
Our work, and your heeding the advice of our network of 10 trademark
attorneys has added up to ZERO trademark filing refusals at CIPO and the
USPTO since 2008.
We wouldn’t be the oldest, most successful trademarking service in North
America without your business.
We also seem to be the last trademark service including some inexperienced
trademark attorneys, who believe in ACTUAL COMPREHENSIVE legal research to
determine if your trademark is LEGALLY CLEAR, before use and before filing any
trademark application – just like the USPTO expects. Yes, this legal research work
is needed – even if not trademarking. Trademarking is advantageous, but every
mark must be LEGALLY CLEAR, based on trademark law.
IF a comprehensive clearance legal research report isn’t 600-800 pages, then it
simply is not done. When enough research strategies are done correctly, and
enough databases are correctly accessed, then and only then will there be a
sizable enough report to prove If any given mark is LEGALLY CLEAR or not.
The problem for most firms is that they rely way too heavily upon an exact name
search on the Internet, and maybe a direct hit search on the CIPO or USPTO web
sites.
They may have been infringing upon some other firms rights in the first place
because comprehensive clearance legal research wasn’t run before first use, or
business start-up. I believe a vast majority of small businesses are totally
unaware of the risk they take when they do not do a full legal search.
At a time when MANY competitors and attorneys are shying away from doing
comprehensive clearance research, from what used to be a 100% practice in
2010, TradeMark Express has chosen to increase its talent in this critical area.
Additionally, we will continue to call out the negligent competitors who sell
trademark “application only” services, based on light Google and direct hit TESS
searches, including unethical attorneys who do not keep the promise to their
clients to protect their best interests. Former USPTO Commissioner David
Gooder called these people “trademark mills”, who “damage” their clients.
It is wonderful to come to work without fear of an angry phone call when a
trademark is refused, like our competitors tolerate every day just for their quick
application only sales. BEWARE of “TRADEMARK MILLS”, as described by USPTO
Commissioner David Gooder, on a conference call with me on June 11, 2021.
Thank you! Chris DeMassa 650-948-0530 / Marcela & Erica 202-496-1600 /
Heather 714-401-3030
Contact Us – Call – Anytime Zoom – Email
TradeMark Express
https://www.tmexpress.com/
Urgent Trademark
https://urgenttrademark.com/
650-948-0530
Los Altos, California Office Staff
202-496-1600
Washington, DC Office Staff
Email: staff@tmexpress.com
Open 7am to 4pm EST, Mon. – Fri.
Since 1992

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