Vic Lin

What is a trademark consent agreement?

What is a trademark consent agreement? A trademark consent agreement is a written agreement between two trademark owners stating that their respective marks are not confusingly similar. Also known as a trademark coexistence agreement, the discussion of coexistence often arises in the context of settling a trademark dispute (such as a TTAB trademark opposition or […]

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What is the design patent application process and cost?

What is the design patent application process? The examination process (aka “prosecution”) for a US design patent application comprises three main stages: initial filing; Office Actions (if any); and allowance. How to file a US design patent application The initial filing a design patent application with the USPTO is fairly straightforward. The two primary components […]

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What to do when your patent application is allowed

What is the Notice of Allowance and Fees Due? When your patent application has been allowed, the USPTO will send a Notice of Allowance setting forth a 3-month deadline to pay the issue fee. This document will also include a Notice of Allowability starting on a separate page which will include the Reasons for Allowance. […]

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How to amend patent claims: marked-up amended claims

When are marked-up claims not required? Patent claims must be amended in a very certain manner. The USPTO has strict marking rules on how amended claims must be shown with respect to prior versions. The format of amended claims are generally called “marked-up” claims. There is no need to show marked-up claims in the following […]

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Why founders should search trademarks before incorporation

Why a trademark search before incorporation makes sense One common pitfall of incorporating is selecting a company name without first conducting a trademark search. Typically, founders consult with a corporate attorney to see if their desired corporate name is available for incorporation without any regard to the possibility that others may have registered a similar […]

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Patenting for startups: Where to begin

Keep your concepts confidential One of the most common pitfalls of startups is the failure to keep otherwise patentable concepts confidential until after applying for a patent. Many entrepreneurs do not realize that US patent laws provide inventors with a 1-year grace period – namely, you have only one year from the earliest date of […]

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When should a startup file a trademark application?

When the name of your company is also the name of your product It’s best to conduct a trademark search for your company name even before incorporating if possible. A search will provide not only peace of mind, but also a helpful assurance that you ought to be able to sell product under the company […]

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When is a trademark primarily merely a surname?

What is a surname trademark? If you are attempting to register a mark that constitutes a surname, there is a good chance your trademark application may be refused for being primarily merely a surname [see TMEP Section 1211]. In such cases, it might be possible to register the mark depending upon a number of factors. […]

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How to Defend a Trademark Cancellation

What is a trademark cancellation proceeding? A trademark cancellation proceeding is basically a mini-lawsuit to kill a trademark registration. Cancellations deal with only registered trademarks, and not pending applications. In what court or government agency are trademark cancellations held? Trademark cancellations are held before the Trademark Trial and Appeal Board (TTAB), which is a part […]

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What is an Advisory Action (AA)?

What is an Advisory Action? An Advisory Action may be issued only in the context of responding to a Final Office Action. It usually comes up when an applicant files an after-final response (i.e., without a Request for Continued Examination). Why do examiners issue Advisory Actions? If such an after-final response does not place the […]

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