Trademark Registration

How to File a California State Trademark Application

Although most businesses opt to file a federal trademark application with the U.S. Patent and Trademark Office (“USPTO”), not every trademark owner qualifies for federal registration. The trademark owner may not be making use of its mark in interstate commerce. There may be an existing federal registration preventing the trademark owner from registering at the…

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Attorneys Signing Trademark Application Papers: Is the Fear of Becoming a Witness and Being Disqualified Overblown?

Trademark applications need to be signed. Other documents in the trademark prosecution process—like statements of use, § 8 declarations of use, § 9 renewals—need to be signed. And the rules are clear that the attorney of record can sign those documents on behalf of the applicant. Yet, many trademark attorneys have a strict policy against…

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Getting Around the § 43(c)(6) Federal Registration Defense to State Claims for Dilution

Trademark lawyers wax eloquent about the significant benefits of federally registering a trademark with the U.S. Patent and Trademark Office. Federal courts do too. And one of the benefits touted is the federal registration defense to state dilution claims provided by Lanham Act § 43(c)(6), 15 U.S.C. § 1125(c)(6).  In fact, in its recently well-publicized…

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But But But . . . I Came Up With That Trademark

Back to back blog posts inspired by clients’ FAQs. Sounds like a new blog category or tag is in order. Last week, I got a call from a potential client. The issue is one that I’m asked about at least 10 times a year. The potential client was going to start a business with a…

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Why I Use My Email Address as Applicant's Email Address on a Trademark Application

Things are so much easier nowadays. Most communications with the United States Patent and Trademark Office (“USPTO”) occur through email (assuming you’ve authorized that form of communication). How many of us even remember the nightmare that used to be Express Mail? In fact, it’s not even called Express Mail anymore—it’s now called Priority Mail Express.…

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Hey Supplemental Register, What's Your Deal?

The United States Patent and Trademark Office’s (“USPTO”) supplemental register reminds me of the odd relative every family seems to have. Essentially, the supplemental register is like your perpetually drunk uncle or aggressively new age aunt. They show up at Thanksgiving, and you think to yourself, why are you even here? The supplemental register is…

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