Trademark Registration
The USPTO Is Dropping the Hammer on Consent Agreements Since In re Bay State Brewing
A consent agreement is exactly what it sounds like. It’s an agreement in which a party consents to the use and registration of the other party’s trademark. Usually, the agreement is bilateral with both parties consenting to the other’s use and registration. Consent agreements are usually submitted to the U.S. Patent and Trademark Office (“USPTO”)…
Read MoreThe Death of a Trademark Registration Kills All Statutory Evidentiary Presumptions
The last four posts covered the importance of obtaining a trademark registration by pointing out how difficult it is to prove common law rights in trademark litigation. On the heels of those posts, I decided to write this short post on the importance of not letting your trademark registration lapse or be cancelled. It dovetails…
Read MoreHow 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…
Read MoreAttorneys 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…
Read MoreGetting 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…
Read MoreOvercoming an Office Action By Waiting for a Cited Trademark Registration to Expire
I’m sure you know the phrase “good things come to those who wait.” It can sometimes be that way when it comes to registering your trademark. Patience can be the key to good trademark prosecution.
Read MoreBut 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…
Read MoreWhy 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.…
Read MoreHey 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…
Read MoreUsing Office Action Response Templates to Respond to Substantive Refusals
When I began my legal career as a trademark attorney, you couldn’t apply for a trademark online through the United States Patent and Trademark Office’s (“USPTO”) website. No one knew what the hell TEAS was because it didn’t exist yet. Ahh … ’twas a simpler time. I prepared my office action responses in my word…
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