FAQ: Questions and Answers

[back to notice text] Question: Where can I find federal trademark registrations? Answer: The United States Patent & Trademark Office (USPTO) keeps the US federal registry of trademarks. It has an online search capability, TESS, which contains more than 3 million pending, registered and dead federal trademarks. This database may not be complete. One should check the News page to see how current the information actually is. Be aware: not all trademarks are contained in the US federal register. There are state trademarks, unregistered (common law marks) and foreign marks as well. A mark does not have to be registered to be valid. [back to notice text] Question: Why are they telling me that they monitor the internet for their mark? Answer: A person can gain rights in a trademark merely by using it. If the mark is not an outright adoption of the original mark, but merely close enough to it so that the question as to whether or not the first mark has been infringed is no longer an open-and-shut issue, the second user can sometimes get rights in the mark just because the second user used the mark, and the first user never objected to it. This is called the "unchallenged use" doctrine. If your site has been up and running for a while, and there has been a significant length of time between you using the mark and them contacting you about it, that can be a powerful argument in your favor that in fact your use of the mark does not infringe theirs. For this reason, a Cease and Desist letter will often have a statement in it to the effect of "We found about about what you are doing as soon as was reasonable." [back to notice text] Question: What is a collective mark? Answer: A collective mark is either a trademark or service mark that is used by the members of an association, organization, cooperative or other collective group. Use of the collective mark indicates that the user is a member of the group that owns the mark. Usually the group establishes rules regulating how members may use the mark. [back to notice text] Question: What does it mean to "license" a mark? Answer: Sometimes marks serve as an indicator of the "quality" of a service or business. The owner of a mark may grant a "license" to a non-owner to use the mark. However, the owner has an obligation to monitor the licensee's use of the mark and must make certain the the user is maintaining the "quality" that the public has come to associate with the mark. [back to notice text] Question: What does it mean to take all reasonable steps to protect a trademark? Answer: If a trademark owner fails to police his or her mark, the owner may be deemed to have abandoned the mark or acquiesced in its misuse. A trademark is only protected while it serves to identify the source of goods or services. If a trademark owner believes someone is infringing his or her trademark, the first thing the owner is likely to do is to write a "cease-and-desist" letter which asks the accused infringer to stop using the trademark. If the accused infringer refuses to comply, the owner may file a lawsuit in Federal or state court. The court may grant the plaintiff a preliminary injunction on use of the mark -- tell the infringer to stop using the trademark pending trial. If the owner successfully proves trademark infringement in court, the court has the power to: order a permanent injunction; order monetary payment for profit the plaintiff can prove it would have made but for defendant's use of the mark; possibly increase this payment; possibly award a monetary payment of profits the defendant made while using the mark; and possibly order the defendant to pay the plaintiff's attorney fees in egregious cases of infringement. Of course, the determination of infringement is actually one that will be made by the court, so a trademark owner is simply using a best guess about whether or not infringement actually has occurred. That best guess may be a good one, based on experience and expertise, or it may be a bad one that doesn't reflect any of the legitimate defenses that might exist. The law doesn't require the mark owner to sue everyone; it just requires the owner to keep his mark distinctive.

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