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What is an Office Action?

After you have applied for a trademark registration with the United States Patent and Trademark Office (USPTO), the trademark is examined by an attorney that works for the USPTO. These Examining Attorneys are charged with making sure (1) all trademark applications follow all formal rules for applications, and (2) no trademarks are trying to be registered for whatever legal reason. When the Examining Attorneys encounter a trademark application that they cannot approve, they issue a communication to the applicant explaining why it cannot move forward. These communications are called Office Actions, and they come in two flavors – Substantive and Non-Substantive. A Non-Substantive Office Action is a letter from the Examining Attorney that is not…Read More

Use in Commerce

Registering a trademark is useful and important, but that is not what gives someone rights in a trademark; registration only documents and clarifies common law rights. To get rights in a trademark in the United States, the mark must be used in commerce in the ordinary course of business. The U.S. has a “use-based” system for trademark registration. That means that you cannot register a trademark with the Principal Register of the USPTO without the trademark first being used in commerce. In the United States, trademark protection is primarily a function of consumer protection, and the law codifies common law rights created by using the trademark. This is different from most other countries because the…Read More

Principal Register v. Supplemental Register

The USPTO allows for registration of trademarks on two different registers. The Principal Register is the ultimate goal for legal protection in the U.S. However, if your trademark is deemed not distinctive of your goods and services, but only capable of being distinctive, it can be registered on the Supplemental Register. The Supplemental Register offers some advantages, but not as much as the Principal Register. Trademarks can be different levels of distinctiveness when you identify your goods. You can learn more about that here. Basically, certain factors can make a mark stronger and more distinct based mainly on the description of a mark for the goods and services. For example, generic marks – like a…Read More

Why It is Important to do a Trademark Search

There is no requirement in the law to perform a trademark search before applying for registration. However, performing a trademark search is an important step to take to protect yourself from expensive legal problems later on. Before you commit money to marketing and advertising of a business name, signature service, or the name of your product, a good idea is investing little money and time at the beginning – to see if there is anything that might come up later that could cost you a lot more time, money, and trouble down the road. The best way to avoid issues later on is to conduct a search of the marketplace for the same or similar…Read More

What Makes a Trademark a Strong Trademark?

What Makes a Trademark a Strong Trademark? One of the most important and most exciting parts of starting a business or launching a new product is coming up with a name and/or developing your marketing. It’s also a dangerous prospect; you might spend a good deal of time and money buying advertising, printing brochures and flyers, and publishing your new brand on your website and around the digital universe. So, you want to be assured all of that investment is not going to waste because the trademark you’re investing in is not going to give your business the protection you need or may even cause problems with another mark, leading to litigation, fines and injunctions.…Read More

How Can I Make My Trademark Incontestable?

A trademark that has been registered on the Principal Register and in use in commerce consistently for five consecutive years is eligible to file for incontestability. This makes such trademarks immune from some of the most frustrating challenges from other trademarks and their owners. First, the things that Incontestability do not immunize a trademark completely from are: Cancellation because of fraudulent procurement (either of the mark or of incontestability); Abandonment; Allegations of the mark being misrepresentative; Allegations that the mark is reserved or prohibited by federal trademark law; Allegations that the mark is merely an individual using their own name for business activities; Earlier use or registration; Antitrust violations; A bar due to the functional…Read More

What is a Trademark?

A trademark is a word, name, symbol or device that identifies and distinguishes the source of consumer goods and/or services. It might be helpful to discuss what a trademark is NOT rather than what it is, because it can be easy to confuse the different types of intellectual property. There are copyrights, patents, and trademarks. Copyrights are for protection of creative expressions, such as songs, movies, photographs, novels or poems. Patents are for protecting rights in functional and useful inventions. Trademarks are different, because trademark law originates from consumer law. Its primary original purpose was to prevent counterfeiting, but now its main function is to prevent confusion among consumers. While trademarks do offer benefits to…Read More

What is the Process for Registering a Trademark?

Coming up with an idea is the first part of the process, and it’s also the hardest part. The remainder of the process follows logical and important steps. You give your goods or services a name or a logo or some other distinctive feature to be identifiable. You also have to make sure that no one else is using that name/logo/identifier by performing a search on your own. Then, you have an experienced trademark attorney do a more thorough search and give you their professional advice on your trademark’s ability to register with the United States Patent and Trademark Office (USPTO). Sometimes, the trademark has a good chance of registering; sometimes, it’s best to just…Read More

Trademarking a Proper Name

Throughout the history of commerce, people have used their own names or family names to identify their products. So, it should follow that surnames or proper names are common trademarks. That’s not the case with the USPTO register, though. Generally speaking, a proper name or surname is not registerable on the Principal Register of the USPTO. The logic is that if someone wishes to use their own name, then someone else already using that name shouldn’t be able to stop someone else from doing the same with their own name. This might seem strange, because we’re used to seeing proper names as trademarks, like McDonald’s, O’Reilly’s, Paul Newman, or George Forman for a few examples.…Read More

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