Category Archive

Starting in February, all U.S. trademark applicants must provide e-mail address In 2019, the USPTO released many systems and rules upgrades, and not all of them provided increased efficiency. Effective February 15, 2020, all trademark applicants will be required to provide an e-mail address on their trademark applications at the USPTO, regardless of whether they are represented by counsel. According …

Have you recently applied for a trademark with the United States Patent and Trademark Office (USPTO) and received an Office Action, and aren’t sure how to respond or what this means?  An Examiner with the USPTO will review your application to make sure it complies with all rules and regulations.  If there are any issues with your application or your …

Last week the Trademark Trial and Appeal Board denied (in a precedential opinion) the trademark SCOOP on grounds of merely descriptiveness, failure to function as a trademark, and for inadequate specimen provided by the trademark owner.  Since the TTAB opinion was issued as precedential, the details of the opinion provide significant learning and guidelines for all trademark owners and applicants. …

On June 24, 2019, in the Brunetti case, a decision consistent with its 2017 Tam decision (read here), the U.S. Supreme Court in a 6-3 decision held that the U.S. Patent and Trademark Office (PTO) could no longer refuse federal registration that “consists of or comprise immoral or scandalous trademarks” holding that such a refusal by the PTO of such …

UPDATED SEPTEMBER 23, 2019 On July 2, 2019 the United States Patent and Trademark Office (“USPTO”) formally adopted a new rule requiring that all foreign trademark applicants must be represented by U.S. counsel.  The new rule went into effect on August 3, 2019.  Below, we explain the rationale for the new rule and how it affects foreign trademark owners. Summary Beginning …

Can you use AMERICA in your trademark? Can you use the word “America” in your trademark? Well, the short answer is yes, but you may need secondary meaning. In honor of the Fourth of July, we thought we would post about the trademark rules regarding using AMERICA and AMERICAN in trademarks. When the word AMERICA or AMERICAN appears in a …

Last week the Trademark Trial and Appeal Board affirmed the refusal of a specimen for retail store services featuring medical devices,” finding that the specimens the trademark owner submitted were unacceptable to establish a connection between the mark and services. Below, we provide best practices for submitting trademark specimens of use to supports your application. Specimen Refused for “Retail Services” …

Remember that just because you can file your own trademark applications doesn’t mean you should. When you file a trademark application, it is the start of a legal proceeding, and as such you may want to have the help and experience of competent trademark counsel to guide you through the process. Numerous reports have found that by hiring trademark counsel …

Yesterday, the Trademark Trial and Appeal Board (TTAB) upheld a ruling on a generic trademark, and in the past year or so, a number of generic trademarks have been refused for registration. What is a generic trademark and why can’t a business owner register a generic trademark? To answer that question, it’s important to first understand the different types of …

Trademarks are valuable intellectual property assets in that they are the only form of intellectual property that effectively has no term.  Although trademarks must be renewed every ten years, so long as a trademark is properly used in interstate commerce in connection with its registered goods and/or services, a trademark can be active for as long as it is in …