How to describe goods and services in a trademark application

A Trademark Must Be Tied to a Product or Service Trademarks do not exist in a vacuum. A trademark must always be tied to particular goods or services offered or sold under the mark. You can’t trademark words in the abstract. So when you hear about a celebrity trademarking a phrase, the phrase or slogan must be […]

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What Is a Trademark Notice of Publication?

What is a trademark Notice of Publication? Before a trademark application matures into a registration, the public has an opportunity to challenge a pending trademark application. The USPTO trademark examining attorney must approve of a pending trademark application before it can be published. Therefore, not all trademark applications will reach publication, especially if an applicant […]

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What is a trademark disclaimer?

What is a trademark disclaimer? Sometimes a trademark may include one or more words regarded as merely descriptive or generic in relation to the products or services covered in a trademark application. A trademark disclaimer is a statement made of record in a trademark application to indicate that the applicant does not claim any exclusive […]

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What is a trademark filing basis?

Use vs. Intent-To-Use A trademark application filed with the USPTO must designate at least one filing basis. For most American applicants, the choice boils down to one of the following bases: Actual Use basis under Section 1(a): This is applicable when the applicant has been using the trademark in U.S. commerce at the time of filing for […]

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Madrid Protocol vs. Conventional Priority: Which is cheaper for foreign applicants to register marks in the US?

Cost of Madrid Protocol Application The Madrid Protocol can be a cost-effective way for trademark owners to obtain international registration through a centralized system, especially if registration is sought in several countries. What if an owner of a foreign trademark application wants to register in the U.S. alone? Will the Madrid Protocol provide non-U.S. companies with a less expensive option for […]

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What is an incontestable trademark registration?

What is an incontestable trademark registration? A federal trademark registration on the Principal Register may become incontestable after five years. An incontestable registration provides its owner with certain rights and advantages. How does a trademark registration become incontestable? Initially, the trademark must have issued on the Principal Register as opposed to the Supplemental Register. The owner must “maintain” […]

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When and how long is the grace period for renewing a trademark registration?

A federal trademark registration can last indefinitely provided that the owner diligently maintains the registration. Such post-registration deadlines include a first deadline at the sixth (6) year anniversary of the registration date, a second deadline at the tenth (10) year anniversary, and every ten years thereafter. A six-month grace period is available after said deadlines for […]

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How can I get U.S. Customs to block the import of infringing products?

Making US Customs Your Ally An owner of a federally registered trademark or copyright can make U.S. Customs an ally in blocking the importation of infringing goods. Known as the Intellectual Property Rights (IPR) enforcement program of U.S. Customs and Border Protection (CBP), this program enables IP owners to record their U.S. trademark and copyright registrations with […]

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What are differences between the Principal Register and Supplemental Register?

Supplemental Register vs. Principal Register By default, most trademark applications seek registration on the Principal Register. When an examining attorney determines that a mark is descriptive and ineligible for registration on the Principal Register, the Supplemental Register might be a viable option if the mark has already been used in commerce in connection with the identified […]

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