Do I need to register or apply for a trademark before using it?

There is no requirement to apply for a trademark prior to using it. Trademark rights in the U.S. are granted to the first one who uses a mark in commerce on particular goods or services, not to those who are first to file with the exception of Intent-To-Use applications that ultimately mature into registrations. If you’re […]

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Where I can find flat fee IP attorneys for filing patent and trademark applications at fixed rates?

Flat attorney fees provide greater transparency and certainty for clients seeking to budget IP protection such as patent applications (aka patent prosecution) and trademark applications (aka trademark prosecution). Innovation Capital Law Group publishes a fixed fee schedule for trademark prosecution which includes a total cost from start to finish assuming no rejections. Trademark applications tend to have […]

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What is trademark use in commerce?

To establish trademark rights in the U.S., a trademark owner must be the first to use a mark in commerce on particular goods or services.  In a trademark application for federal protection, the USPTO will ask for the date the mark was first used anywhere, and the date the mark was first used in commerce, […]

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What are inherently distinctive vs. merely descriptive trademarks?

When you’re contemplating a name for your new business or product line, it’s common sense to avoid words that are too close to an existing trademark used for similar goods or services. However, likelihood of confusion is not the only factor to consider when adopting a new trademark. You should also consider the inherent distinctiveness of […]

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What are substantive vs. non-substantive trademark Office Actions?

What is a non-substantive trademark Office Action? Non-substantive trademark Office Actions are letters issued by USPTO examining attorneys that do not necessarily refuse registration of the mark. Such Office Actions typically do not require significant legal research or argument. For example, any of the following reasons may lead to a non-substantive Office Action (what I […]

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What is a TTAB trademark opposition or cancellation?

What is the difference between an opposition and a cancellation? Trademark oppositions and cancellations are adversarial proceedings before the Trademark Trial and Appeal Board (TTAB) of the USPTO to defeat the registration of a mark. Oppositions challenge pending trademark applications while cancellations contest trademark registrations.  These adversarial TTAB proceedings are basically lawsuits focused on whether a particular […]

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What is an Intent-To-Use (ITU) trademark application?

What is an ITU application? An Intent-To-Use (ITU) trademark application allows an applicant to apply for a trademark that has not yet been used in commerce. Use in commerce refers to the usage of your trademark in connection with selling or offering the relevant goods or services. After the initial filing, the applicant must file […]

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