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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Can a person’s name be trademarked?

Can I trademark a person’s name? Maybe. You might be able to register a person’s name as a trademark if the name meets certain conditions. Here are requirements for trademarking your own name or someone else’s name: If the name identifies a living individual, consent to register must be made of record [see TMEP 813]. […]

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How to trademark books, DVDs and creative works

What are common problems in registering a trademark on books? Books, DVDs, CDs, films, videos and other media containing creative content are generally considered creative works. It’s natural for an author of a book or other creative work to think about protecting the title as a trademark. The specific challenge in trademarking creative works is […]

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No use of mark before filing trademark application: What happens?

Do-It-Yourself Trademark Filings There are several DIY and semi-DIY trademark services offering to help applicants file their trademark applications with the USPTO. In many cases, we see errors jeopardizing the validity of the registration. These mistakes become fatal if not timely corrected. The result is the sacrifice of the validity of the registration in exchange […]

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What is a lack of bona fide intent to use?

What is intent to use? In order to understand what something is not, it helps to begin with what it is. Intent to use refers to a trademark applicant’s intention to use a trademark in commerce. This intention forms the basis for filing a trademark application especially when the mark has not yet been used. […]

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What is an extension of time to oppose?

What is an extension of time to oppose a trademark application? The US trademark legal system allows third parties to oppose the registration of a pending trademark application. When a trademark application is published for opposition, a window of time is given to the public to oppose a trademark application that has received preliminary approval […]

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How to transfer trademark ownership

How to transfer trademark ownership: What is a trademark assignment? A trademark assignment is a document signed by the original owner (“assignor) transferring ownership of the trademark to a new owner (“assignee”). In most cases, only the assignor needs to sign the trademark assignment. The USPTO provides a helpful online resource on trademark assignments. What […]

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What is a trademark registration basis?

Trademark registration basis There are only two bases for a registering a trademark in the US: use in US commerce [Section 1(a) – see TMEP Section 900]; foreign registration [Section 44(e) – see TMEP Section 1004]. A US trademark application cannot mature into a registration without at least one valid registration basis. Since a Section […]

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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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