What is a trademark counterclaim? Is the best defense a strong offense? When it comes to TTAB oppositions and cancellations, it may make sense to consider filing a counterclaim against the plaintiff. Monetary relief is unavailable in TTAB proceedings. A potential TTAB counterclaim, therefore, will typically seek to cancel trademark registrations owned by the petitioner […]
Articles Tagged: trademark registration
How to Cancel a Trademark Registration
How to Cancel a Registered Trademark As recently as a year ago, this article would have been written quite differently. A trademark cancellation filed with the TTAB would have been the only procedure to discuss. We’ll certainly delve into a TTAB cancellation in this post, but we now have a couple more ways to cancel […]
How to Deal with a Counterfeit Product or Claim
What is the difference between counterfeiting and trademark infringing? Is it fake? Whether or not a product is a counterfeit boils down to the degree of similarity. Are you dealing with a fraudulent imitation? If so, it might be a counterfeit. The difference between trademark infringement and counterfeiting is a matter of the extent of […]
What is a common law trademark?
How are trademark rights determined in the US? In the US, trademark rights are generally given to the first one to use a mark. Except for a few limited circumstances, the first user is the rightful trademark owner in the US. A common law trademark refers to the rights belonging to the first person or […]
How to Trademark in Metaverse: Is it possible to register trademarks for virtual goods?
Is it possible to register a trademark in the metaverse? Times are changing. What may have been unimaginable years ago has become a genuine concern for trademark owners who care about the virtual world. Yes, you can register trademarks for virtual goods with the USPTO. If you already own registered trademarks for goods and services […]
Smarter Trademark Response: What are more effective ways to respond to a trademark Office Action?
What are smarter ways to respond to trademark Office Actions? Though you hate to see them, Office Actions are fairly common in USPTO trademark applications. While much can be done upfront to minimize the risk of a trademark refusal, you sometimes get a trademark rejection no matter how hard you tried to avoid it. If […]
How to Expedite Trademark Application: When and how can you speed up your trademark examination process?
Can you expedite a US trademark application? The short answer is probably not unless you have a really good excuse. While it’s not impossible, bumping up a US trademark application can only occur under very limited circumstances. Actually, it is significantly more difficult to expedite a trademark application than a patent application. To speed up […]
Substitute specimens: How to show trademark use when original specimens rejected
Why the need for substitute specimens of use? If you’ve encountered a rejection of your trademark specimens of use, then you know what I’m talking about. Substitute specimens. Why and when do they come into play? What exactly are substitute specimens? What are the timing requirements? Can you create new specimens in time? You have […]
Is a Request for Reconsideration an effective response to a trademark Final Office Action refusal?
What is a final refusal to register? Is a twice-rejected trademark application the end of the road? When you receive a second Office Action maintaining a refusal to register, does it make any sense to pursue another response. So you responded to the first rejection by filing a response to a non-final Office Action. In […]
How much does a TMA petition for trademark nonuse cost?
What is a TMA petition based on trademark nonuse? Third parties can now file petitions to remove some or all of the non-used goods or services in a trademark registration without going through the more expensive and lengthy process of a TTAB trademark cancellation. Under the Trademark Modernization Act (TMA), a petition may be filed […]