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


Photo of ants on opposite sides of a bamboo stick

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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Disqualification of Trademark Attorney

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 signing any trademark application documents on behalf of their clients. That policy is based on the concern that, by signing such documents, the attorney can be considered a witness and might even be disqualified. But how much of a concern should this really be? Turns out it is probably very unlikely that anything will come of it. continue reading→

TTAB causes of action: lining up the chess pieces

Systems are incredibly powerful in the practice of law. By system, I mean a set of detailed methods, procedures, and routines used to perform an activity. When it comes to filing a notice of opposition or petition for cancellation or counterclaims in a Trademark Trial and Appeal Board ("TTAB") proceeding, I have a very simple system that I use to make sure that I am not omitting any causes of action. OK - it's really just a checklist, but it is very effective. At the end of this blog post, you'll have an opportunity to download a copy of the checklist. Let's review the available causes of action in TTAB proceedings. continue reading→

Image of person jumping into 2017 with text The New TTAB Rules

On January 14, 2017, the Trademark Rules of Practice were amended. The 2017 amendments are the first major set of changes since 2007. Many of the changes emphasize electronic filing and service, discovery limitations, and simpler introduction of evidence by way of declarations.

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It doesn't matter what I believe. It only matters what I can prove.
So don't tell me what I know or don't know. I know the LAW!
- Lieutenant Daniel Kaffee in A Few Good Men

In 2015, the Federal Circuit examined what is required for a trademark applicant to prove that it had a bona fide intention to use a trademark in commerce when filing a trademark application on an intent-to-use ("ITU") basis under 15 U.S.C. § 1051(b)(1). M.Z. Berger & Co., Inc. v. Swatch AG, 787 F.3d 1368 (Fed. Cir. 2015). In reviewing the legislative history of the Trademark Law Revision Act of 1988 ("TLRA"), the Federal Circuit held that an applicant's subjective belief is not enough. In other words, a trademark applicant cannot satisfy the standard by just submitting a declaration or otherwise testifying that "at the time I filed the trademark application, I did truly intend to use the trademark." Yet most ITU applicants, and their counsel, don't know or consider what may be required to prove a bona fide intention to use should the issue ever be litigated in a Trademark Trial and Appeal Board ("TTAB") proceeding or in court. Let's take a look at what principles we can extract from M.Z. Berger and subsequent cases. continue reading→