the Trademark Resource for Start-Ups, Business Owners, Marketing Professionals, In-House Counsel, and Attorneys

Office Action Response

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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”) to overcome an office action refusing registration because of a § 2(d) likelihood of confusion with a prior registration or prior pending application. Most of the time, a consent agreement is sufficient to overcome a § 2(d) likelihood of confusion refusal, but the USPTO is not obligated to withdraw the refusal.

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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. continue reading→

Trademark Crowded Field
Whether trying to overcome a likelihood of confusion refusal by an examining attorney or litigating a Section 2(d) likelihood of confusion claim in an opposition proceeding, arguing that there is no likelihood of confusion due to a crowded field (many similar marks in use for similar goods or services) has pretty much been hit or miss. In other words, there has been little consistency by examining attorneys at the ex parte prosecution level or by the Trademark Trial and Appeal Board (“TTAB”) in oppositions or cancellations. But a pair of recent decisions by the Federal Circuit should help change that—hopefully. It appears that both examining attorneys and the TTAB need to give more careful consideration and afford greater weight to evidence of a crowded field.

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