Trademark Audit: How to lose your trademark registration

What is a trademark audit? A trademark audit is a USPTO program to check random trademark registrations to see if the registered trademark is still in use. Known as the Post Registration Audit Program, the goal of the USPTO is to bolster the accuracy and reliability of its trademark register. Audits give the USPTO a […]

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What is a patent rejection?

Has your utility patent application been rejected? If so, welcome to the club. Approximately 90% of utility patent applications will get rejected. Utility applications often receive multiple patent rejections. So do not be disappointed. Rejections are the norm for utility patents. This article will help clarify a patent rejection so that you can form an […]

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What a USPTO patent examiner really thinks

Thinking like a patent examiner We are privileged to have a former USPTO patent examiner, Lyman Smith, as Of Counsel patent attorney to our firm. The following insightful answers come from Lyman’s familiarity with the inner system of the US Patent Office. Keep in mind we are talking about utility nonprovisional patent applications, and not […]

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Are many goods or services in a US trademark application OK?

Can you have too many goods or services in a US trademark application? Most foreign countries do not require use of the trademark for registration. So it is common to find a high number of goods or services in Madrid trademark applications that originate outside the US. The lack of a use requirement in foreign […]

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What are the new trademark filing rules for 2020?

What are the new USPTO trademark filing rules in 2020? Starting Feb. 15, 2020, certain mandatory requirements for trademark filings will take effect. These changes to trademark filing rules pertain mostly to communications with the USPTO and specimens of use. The new trademark filing rules will require nearly all new trademark applications to be filed […]

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How does the USPTO get prior art?

How do USPTO patent examiners get prior art? When examining patent applications, USPTO examiners get relevant prior art through two primary means: the patent examiner searches the prior art; and relevant prior art is submitted for the examiner’s consideration. The active approach of the examiner searching prior art is straightforward and no different than what […]

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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 PPH (Patent Prosecution Highway)?

What is PPH? PPH stands for Patent Prosecution Highway, a cooperative program between the USPTO and participating foreign patent offices to expedite the allowance of utility patent applications that previously received favorable rulings. In order to take advantage of this program, the US utility patent application must have a counterpart application with the same claims […]

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