The Art of Persuasion: How to persuade IP examiners

Why is persuasion necessary? If you’re going to be an IP attorney, you must be able to persuade. There is no way around it. Whether you’re focused on IP litigation or prosecution, the skill of persuasion is critical. Here’s the problem. Persuasion involves people skills and a proper balance of listening and speaking. When it […]

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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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What is a trademark Office Action?

What is a trademark Office Action? When you apply to register a trademark with the USPTO, your trademark application will be assigned to a trademark examiner called an “examining attorney.” Unlike patent examiners, trademark examiners are all licensed attorneys at law. A trademark Office Action is a letter issued by the examining attorney assigned to […]

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What is an inherently distinctive trademark?

What is an inherently distinctive trademark? An inherently distinctive trademark is a mark that lacks descriptive wording in relation to your goods or services. It’s tempting to choose a name or term that describes a quality or characteristic of your product. Resist that temptation and try to come up with a mark that is fanciful […]

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What is a trademark rejection?

What is a trademark rejection? Not all trademark Office Actions are the same. Your application may receive a trademark rejection, or a registration refusal, which will require greater effort to overcome. On the other hand, an Office Action may be issued in your trademark application raising minor issues that can be resolved without arguments. Let’s […]

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