Recently, the USPTO issued an official reminder for the purchase of trademarks!
It mainly focuses on the value of the trademark and the certain risks associated with the purchase of the trademark. The value of a trademark is related to the goodwill of the brand to which it is associated, which refers to the consumer's recognition of the company, product, or service associated with the trademark. The USPTO reminds that when a trademark is transferred in the United States, it must be accompanied by the goodwill associated with the trademark** to ensure that the goods or services provided by the trademark purchaser in the course of using the trademark are similar to the quality of the trademark or service provided by the prior trademark holder, which is conducive to protecting consumers from deception and preserving the goodwill of the trademark.
The potential trademark risks may involve trademark invalidation, trademark non-transferability, etc., so the USPTO recommends that a professional lawyer conduct an investigation on the purchased trademark before purchasing a trademarkAvoid being unable to enjoy any valid trademark rights and interests due to trademark invalidation, resulting in a bamboo basket that is empty
The USPTO reminds purchasers to consider carefully regarding the purchase of trademarksDoes the other party's trademark have any actual goodwill? Can it be transferred together? Does the transaction genuinely transfer the goodwill of the traded trademark to you?
For customers who urgently need a registered U.S. trademark, they may directly purchase a registered U.S. trademark to meet needs such as Amazon brand filingIgnoring whether the trademark itself complies with the regulations and whether there are defects, in the long run, the trademark buyer often bears a greater risk, and is even likely to buy back a time bomb.
Consequences of Purchasing an Invalid Trademark USPTO Illustrations:
1.The buyer may face the risk of being revoked due to the questioning of the legality of the purchase of the registered trademark。This includes if the trademark applicant (seller or original trademark holder) knowingly submits a declaration document containing a false signature stating that the trademark is intended to be used commercially or in the goods or services listed in the application when applying for trademark registration.
For example, the trademark applicant only filed an application for registration with the American Standard, and the applicant sold the trademark directly at auction** without actually using the trademark in commercial activities in the United States. Even if the purchaser is unaware that the trademark registration violated the regulations of the USPTO, a third party may file a request for cancellation, invalidation, or re-examination of the trademark purchased from the USPTO for misconduct in the trademark registration process.
2.If there is evidence that the trademark was filed or registered in violation of U.S. trademark law or USPTO regulations, the trademark may be subject to administrative sanctions from the Trademark Office. An administrative sanction order can terminate any trademark application under investigation or invalidate any trademark registration under investigation.
For example, let's say you want to register your brand on an e-commerce platform, and the platform's brand registration requires a registered trademark. Due to the long period of official examination of your own trademark, you decide to buy a registered trademark directly. However, if the purchased trademark was originally registered in violation of the provisions of the USPTO, the trademark may or has been invalidated in an administrative sanction order. If this is the case, then the registration of the trademark is inherently invalid and cannot be used as a brand registration for the e-commerce platform.
Mai Mai Reminder:There are people in the market who sell thunderstorm trademarks at low prices, and sellers should pay attention to vigilance. Regardless of whether the purchaser is aware of the fact that the initial application for registration of the purchased trademark violates the regulations of the Trademark Office, the transfer of the trademark cannot solve the problem that the offending trademark will face invalidation if the trademark is subsequently invalidated by a third party, or re-examined, or subject to administrative sanctions by the USPTO.
Things to keep in mind before buying a trademark
1. Check whether the assignor has also registered the same or similar trademark;
2. Whether the trademark has been approved for registration;
3. Inquire about the status of the transferred trademark;
4. Check the validity period of the trademark;
5. Whether there is a pledge of the trademark;
6. Whether the trademark has copyright;
7. Whether the trademark has become a generic name;
8. Whether the transaction trademark has a "joint trademark";
9. Whether the other party has the right to dispose of the trademark right;
10. Whether there is any falsification or use of evidence;
11. Whether there is any fictitious U.S. company, U.S. address, or even stealing the name of other U.S. companies;
12. Whether there is any misappropriation of the signature of a U.S. lawyer, providing a false third-party signature, etc.;
How to prevent and control risks?
1. Do a good job of trademark compliance research before purchasing. It is recommended to check the status of the trademark, including the application date, the latest trademark status, check the whole process of trademark registration, whether there are any abnormalities in the official documents displayed on the official website, etc., and if the trademark is a U.S. applicant, further investigate the authenticity and compliance of the applicant and the application address.
In order to reduce the risk of U.S. trademarks, Medtoon has released a U.S. abnormal trademark search, and sellers can conduct trademark searches before purchasing the current label or want to know more about the U.S. standard.
2. Review the categories and specific goods designated by the trademark to determine whether they meet the current main business scope. If there are items that are beyond the scope of one's own use, and the possibility of subsequent use is low, it is recommended to take the initiative to delete the goods or services that are not involved in the actual use of the trademark at the oath stage in the fifth year after the trademark registration.
3. The purpose of obtaining a registered trademark is to protect the exclusive right of the logo on the goods or items in demand. After purchasing a trademark, it is recommended to use the trademark on the goods or services designated by the trademark to maintain the quality of the goods or services and maintain the goodwill of the trademark.
4. For trademarks to be used for a long time, it is recommended to entrust a U.S. lawyer to register the U.S. Standard in its own name under the principles of ensuring that the registration method is legal, the evidence of use is true, and the trademark is used in U.S. commerce.
Although obtaining a trademark by purchase has the advantages of short time, convenience and speed, Maimai recommends that sellers who intend to purchase should avoid risks in advance, and consult Maidtom professionals for advice if necessary, so as to avoid greater losses due to temporary attempts.