Can I stop a trademark squatter in the United States?

A trademark is a symbol that identifies the manufacturer of a product. A trademark owner is granted a set of exclusive rights to use the trademark on products. A trademark owner can prevent other people from placing the same trademark on similar goods. When a trademark is used by someone other than the trademark owner that is known as trademark infringement. A trademark owner can stop trademark infringement by using the unauthorized use in court.

Trademark rights in the United States are tied to use in commerce. The rights related to a trademark are territorial within the United States. Each state in the United States has laws which regulate the use of trademarks and trademark infringement. A trademark is automatically granted certain rights, within a state, when a manufacturer first starts selling products branded with the trademark. Registering a trademark with the United States Patent and Trademark Office will strengthen a trademark and give the trademark owner additional right, but registration of a trademark is not necessary to start using the trademark. Registering a trademark gives the trademark owner the ability to file a trademark infringement lawsuit in federal court and creates a presumption that the trademark is valid.

A trademark squatter is a person that registers a trademark with no intention of actually using the trademark in commerce. A trademark squatter will register a trademark for a famous brand before the real trademark owner and then hold the trademark ransom. The trademark squatter will demand payment from the real trademark owner knowing that it is a time consuming and expensive process to get the trademark squatter’s registration canceled.

Even though trademark law in the United States is tied to use in commerce, it is possible for trademark squatters to operate in the United States. A trademark squatter can file an intent to use trademark application. An intent to use trademark application states that the applicant has not used the trademark in commerce yet, but intends to use the trademark in the future. Once the intent to use trademark application is reviewed and approved, the application is published in the United States Patent and Trademark Office Weekly Gazette. There is a thirty day window for the general public to object to the registration of the trademark application after publication. If no objection is received, a Notice of Allowance is issued. The squatter must either file a Statement of Use or an extension within six months to keep the trademark application alive. Six extensions can be filed for a cost of $100 each. This effectively allows a trademark squatter to hold a trademark ransom for three and a half years.

If the trademark squatter files a statement of use, the real trademark owner could attempt to get the trademark squatter’s registration canceled at that point.

Trademark owners must diligently police their trademarks by reviewing the United States Patent and Trademark Office Weekly Gazette or risk a long protracted battle for the right to use their trademark.

If you have questions or comments for the authors of this blog please email us at: admin@uspatentlaw.cn