What is a partial refusal?

What is a partial refusal in a trademark Office Action? A trademark Office Action with a partial refusal can be a mix of good news and bad news. The bad news is that a portion of your mark is being rejected. The good news is that the remainder of your trademark application is acceptable. In […]

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Trademark application rejections: Reasons why and how to respond

Why do trademark applications get rejected? Most trademark applications are not approved on their first go-around according to USPTO trademark statistics. Only 34.4% of TEAS Plus applications and 16.3% of TEAS RF applications receive a “first action approval” (as of the date of this post). That means that Office Actions are issued against the vast […]

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Prior-filed application: How to deal with suspension

What is a prior-filed application? A prior-filed application is a trademark application with an earlier filing date than yours. If the USPTO trademark examining attorney sees a potential likelihood of confusion between your mark and that of the earlier-filed application, the examining attorney will note the prior-pending application in an Office Action [see TMEP 716.02(c)]. […]

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What we need to file your trademark application

What information do you need to provide for us to file your trademark application? Since we get these questions all the time, we thought it would be helpful to provide a simple guide on what we need to file your trademark application. Certain parts of the trademark application will require strategic considerations, so give careful […]

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Madrid Trademark – US Office Action: How to respond [66(a)]

US Office Action in Madrid Protocol Trademark Application Madrid Protocol trademark applications that enter the US through Section 66(a) will often encounter several issues. There may be substantive refusals and non-substantive issues. Substantive rejections may include a likelihood of confusion or merely descriptive refusal, or both. Non-substantive issues typically do not require an extensive response. […]

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When is the right time to trademark a product or company name?

When is the right time to file a trademark application? Trademarks differ from patents in terms of timing. Unlike patent deadlines, there is no strict due date for filing a trademark application, although there can certainly be negative consequences for waiting too long. Assuming that you do not have enough cash now to apply for […]

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Rejected trademark specimens: What to do

Why trademark specimens of use get rejected Back in the old days when paper trademark applications were filed via snail mail, original specimens of use were mailed to the USPTO. The physical specimens of use had to meet certain dimensional requirements, such as being flat or flattened, in order to avoid the hassle of dealing […]

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What is the rule regarding foreign trademark filers and US attorneys?

What is the rule regarding USPTO trademark applications by foreign applicants and the need to have a US-licensed attorney? Effective August 3, 2019, the USPTO will require all foreign applicants to be represented by an attorney licensed to practice law in the US in order to file a US trademark application. This rule regarding representation […]

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