A frequently asked question in my practice is what filing basis should our company rely on in applying for a U.S. trademark application. As many readers may know there are multiple filing bases and to learn more about the basic information for each filing basis, please review our web page…
This question, although it seems basic is a good question that is frequently asked, and should be thoroughly understood before proceeding with trademark registration. The concepts of trademark law namely use, protection, enforcement, and distinctiveness are all interrelated. A trademark owner can save time, expense, and effort by adopting an…
Many clients inquire about whether an acronym or an abbreviation can function as a trademark. The answer to this inquiry will depend on several factors. The first question is does the acronym or abbreviation stand for specific wording. If it does, is the specific underlying wording merely descriptive of the…
My clients frequently inquire about using a geographic term as part of a trademark. Incorporating geographic words into a trademark places the applicant in a position where the application may be refused. There are two primary refusals often issued by Examining Attorneys at the United States Patent & Trademark office…
Typically, trademark applications and registrations can be assigned in whole or in part. For general information on trademark assignments, see the web page entitled, Trademark Assignments, where important concepts such as the chain of title and recording an assignment are discussed. However, there are special rules for intent-to-use applications under…
If an organization is offering products or services under a trademark in another country or plans to enter a market abroad in the future, consideration should be given to registering your trademark in that country. There should be an inquiry as to whether the mark is currently in use in…
One of the most frequently asked questions in our law practice is who should be the legal owner of a trademark. It is hard to believe that the “name section” of the trademark application is the section most frequently incorrectly completed of all the sections of the trademark application. If…
Yes there are differences between a refusal issued on deceptive grounds and one issued because the mark is deceptively misdescriptive. Under the Trademark Act, Section 2(a) a mark cannot register on either the Principal or the Supplemental Register if it is held to be deceptive. An example would be a…
Word Marks One of the most frequently asked questions in our practice is how do you evaluate trademarks to determine if a likelihood of confusion would result in the marketplace. The applicable rules will vary based on the type or types of marks in question. For example, if both marks…
A frequently asked question in our trademark practice is what filing basis should the trademark applicant rely on when filing its trademark application with the United States Patent & Trademark Office. There are five filing bases to choose from to fulfill the statutory requirements when filing a trademark application. For…