Are trademark rights based on first to use or file?

Are US trademark rights based on first to use or file? Many foreign countries use a first-to-file system for trademark registration and protection. Whoever registers a trademark first has rights regardless of whether they were first to use the mark. In fact, some countries do not require any use to register a trademark or renew […]

Read More

Can you suspend or extend trademark opposition deadlines?

What is the difference between a suspension and an extension of trademark opposition deadlines? Each trademark opposition will have deadlines set by the TTAB. When a party believes that an extension or suspension may be warranted given certain circumstances, a party may file a motion to extend or motion to suspend. If the nonmoving party […]

Read More

What is a TTAB summary judgment motion?

What is a TTAB summary judgment motion? A TTAB summary judgment motion is a pretrial filing made to request an earlier decision in a trademark opposition or cancellation proceeding before the USPTO. Such a motion is called dispositive since it can potentially dispose of the case. Due to its dispositive nature, summary judgment motions are […]

Read More

Why an early trademark filing date matters

Why does an early trademark filing date matter? US trademark law generally regards the first trademark user, and not the filer, as the rightful owner. This distinction makes the US different from many foreign countries which provide the first filer with trademark rights. So if earlier trademark use is the determining factor, why should a […]

Read More

What is trademark monitoring?

What is a trademark monitoring service? A trademark monitoring service can notify you of trademark applications by third parties that may be similar to your trademarks. There are a variety of trademark monitoring services that range from US to worldwide, and from federal filings to federal and state. When do you need a trademark monitoring […]

Read More

Trademark strategy: 5 steps to optimize chances of registration

How to develop a trademark strategy that will improve chances of registering your mark A successful trademark registration will depend a great deal upon the preliminary work done before filing the application. The more you can avoid potential obstacles and reduce risk upfront, the greater the chance of a smooth application process. Here are practical […]

Read More

How many TTAB cases reach final decisions?

How many TTAB oppositions and cancellations reach final decisions? At the outset, let me clarify that this post contains rough estimates of final decisions in adversarial TTAB oppositions and cancellations which are merely approximations, and not based on any solid statistical disciplines. I’m simply comparing the number of final judgments made in 2019 to the […]

Read More

How to prevent a trademark opposition

How to reduce the probability of trademark oppositions Neither you nor your IP attorney can predict with absolute certainty how third parties may feel about your particular trademark. Keep in mind we are not talking about the review of your application by the USPTO trademark examining attorney. Even if the examining attorney believes your mark […]

Read More

How to Defend a Trademark Opposition

How to defend your trademark A trademark opposition is essentially a battle for the registration of your trademark. Your trademark application had been preliminarily approved by the Trademark Office. An opposition is a filing by a third party with the TTAB to block your trademark from being registered. This post delves into what it takes […]

Read More

How to Oppose a Trademark Application

When is the right time to oppose a trademark application? Before you can oppose a trademark application, the mark must first receive preliminary approval. A trademark application is “published for opposition” after it has undergone a favorable examination process. If and when a trademark application has been approved for publication, you can oppose the mark […]

Read More