6 Part Series

Issues Encountered During Federal Trademark Registration

Although registering a federal trademark with the United States Patent & Trademark Office (USPTO) may seem simple and straightforward on the surface, Trademark Law is actually very complex and if you are not aware of certain laws, rules and procedures, they could prove fatal to your trademark application and potentially your business. In this six part series, we look at some of the common issues that occur with new trademark applicants during the federal trademark registration process.

Part 1: Trademark Selection

Part 2: Trademark Classifications

Part 3: Trademark Search

Part 4: Trademark Priority

Part 5: Trademark Application Refusal

Part 6: Responding to Trademark Office Actions

Industry Trademark Registrations

Example Trademark Registrations By Industry

Our trademark attorneys have created a sample inventory of trademarks organized by industry that have been filed or registered with the United States Patent & Trademark Office (USPTO). This initiative is aimed at aiding our clients in gaining insight and understanding of the trademarks that other businesses are attempting to protect within their respective industries.  Please note that the inventory of trademarks by industry is updated periodically and may not be current at time of viewing.

Sports Industry Trademarks

Cannabis & CBD Industry Trademarks

Apparel Industry Trademarks

Nutritional Supplement Industry Trademarks

Beverage Industry Trademarks

Pet Industry Trademarks

Entertainment Industry Trademarks

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  • The primary issue in this case was whether "PRECISION CONVERTING" had acquired distinctiveness. Under Section 2(f) of the Trademark Act, a mark that is merely descriptive of the goods or services can be registered on the Principal Register if it has become distinctive of the applicant’s goods or services in commerce. Acquired distinctiveness, or secondary meaning, occurs when the primary significance of the term in the minds of the consuming public is not the product but the producer.

  • In the case of In re Peace Love World Live, LLC (Serial No. 86705287), the TTAB addressed whether the trademark “I LOVE YOU” for bracelets would likely cause confusion with the pre-existing trademark “I LUV U” for jewelry, including necklaces, bracelets, rings, charms, pendants, and earrings.

  • The central aspect of this case revolved around the “something more” standard, which requires additional evidence to establish the relatedness of goods and services beyond merely showing that similar marks are used. Specifically, the “something more” standard necessitates proof that consumers would likely believe that the goods (wine) and services (restaurant and bar services) come from the same source.

  • The primary issue in this case was whether the dominant feature of Covalinski’s mark “REDNECK RACEGIRL” would likely cause confusion with the pre-existing “RACEGIRL” mark. The Examining Attorney contended that the dominant feature in both marks was the word “RACEGIRL,” and since the goods were identical or closely related, there was a likelihood of confusion among consumers.

  • The primary issues in this case were twofold: whether Lorenzo’s mark would likely cause confusion with Nike’s “JUST DO IT” trademark, and whether it would dilute the famous mark’s distinctiveness. Nike argued that the fame and recognition of its “JUST DO IT” trademark, which has been used extensively in connection with clothing and accessories, meant that any similar trademark would confuse consumers and diminish the unique association with Nike.

  • The central issue revolved around the likelihood of confusion between MetaBev’s application to register the trademark “CHILL” for hard seltzer and several pre-existing trademarks owned by Molson Coors Beverage Company USA LLC and Chillfizz Beverage LLC. These existing trademarks also featured the term “CHILL” and were used for beer and hard seltzer.

  • The primary issue in this case was whether the prior decision regarding the similarity of the marks should prevent Monster Energy from arguing confusion in the current case. In the earlier proceeding, the TTAB had concluded that the marks were not confusingly similar because they were so differently stylized that they did not resemble each other. This finding was essential to the previous judgment, which denied Monster Energy’s opposition.

  • The primary issue in this case was the potential for consumer confusion between the two marks, both of which contained the dominant term “IRON BALLS.” Petitioner argued that by limiting Respondent’s trademark to “micro-brewed craft beer,” the products would be sufficiently distinct to prevent confusion. Additionally, the case examined whether the doctrine of collateral estoppel (issue preclusion) would bar the Petitioner’s claim due to a prior decision.

  • When businesses create trademarks, they often include words that describe their products or services. These descriptive or generic terms can be an issue when registering the trademark. To address this, the United States Patent and Trademark Office (USPTO) uses something called a “trademark disclaimer.” This article will explain what a trademark disclaimer is, why it is […]

    Categories: FAQ's
  • Trademark incontestability is an important concept for businesses and brand owners looking to solidify and protect their trademarks. In simple terms, incontestability is a status that a registered trademark can achieve, providing stronger legal protections and making it much harder for others to challenge the trademark’s validity. This status is governed by Section 15 of the […]

    Categories: FAQ's
  • When considering the purchase of registered trademarks from online sellers, beware - it's more than likely a scam! Additionally, internet trademark auctions websites where individuals and entities sell registered trademarks from various jurisdictions, including the United States. Although some of these platforms may operate legitimately, others might offer registrations that are invalid.

    Categories: Uncategorized
  • The term “ornamental refusal” refers to a situation where the USPTO rejects a trademark application. This rejection is grounded in the belief that the proposed trademark serves more as a decorative feature rather than as a unique identifier of the source of goods or services.

    Categories: Trademark Refusals
  • In recent years, the cannabis industry has seen a surge in growth and innovation, with changing laws and attitudes toward marijuana and hemp. As legalization spreads across the United States, businesses in this industry face unique challenges, one of which is protecting their cannabis trademarks. In this comprehensive blog post, we will explore the intricacies of […]

  • The cannabis industry is a rapidly evolving landscape, with laws and regulations constantly shifting in response to scientific discoveries, public sentiment, and legal challenges. Among the many cannabinoids found in the cannabis plant, Delta-9 tetrahydrocannabinol (Delta-9 THC) and tetrahydrocannabinolic acid (THCa) have been subjects of much discussion and curiosity. In this article, we will delve into […]

  • On August 29, 2023, the Department of Health and Human Services (HHS) made a significant recommendation to the Drug Enforcement Administration (DEA) concerning the status of marijuana under the Controlled Substances Act (CSA). They proposed a shift in its classification from Schedule I to Schedule III. In other words, the DEA is likely to reschedule cannabis […]

  • The famous mark doctrine, deeply rooted in U.S. federal law, is an instrumental legal principle that offers elevated protection to trademarks that have attained an exceptional level of renown. These trademarks, often described as “super strong,” stand apart due to their broad recognition among the American consuming public. Their fame is not just a title—it’s a […]

  • The “well-known marks doctrine” of the Paris Convention is a legal rule under which a trademark or service mark is protected within a nation if it is well known in that nation even though the trademark is not actually registered or used in that nation. The well-known marks doctrine is required to be available in all […]

  • The United States Patent and Trademark Office (USPTO) employs an international classification system for trademarks that is similar to how department stores categorize merchandise into different departments. The classification system used by the USPTO serves to streamline the process of registering and protecting trademarks by grouping goods and services into 45 distinct classes. Classes 1-34 cover […]

  • The United States Patent and Trademark Office (USPTO) adopts a classification system known as the International Classification of Goods and Services, often referred to as “Nice Classification,” established under the Nice Agreement. This globally-recognized system helps to categorize and standardize different kinds of goods and services into 45 distinct classes—Classes 1-34 for goods and Classes 35-45 […]

  • The Trademark Modernization Act of 2020 (“The Act”), passed in December of that year, represents a significant milestone in the evolution of trademark law in the United States. This comprehensive legislation aims to address emerging challenges in the digital age while bolstering the protection of trademarks. The Act introduces important changes to the trademark registration process, […]

  • The Agriculture Improvement Act of 2018 (also known as the 2018 Farm Bill) indeed removed “hemp” from the Controlled Substances Act’s (CSA) definition of marijuana, which made hemp and its derivatives federally legal as long as they contain no more than 0.3 percent delta-9 tetrahydrocannabinol (THC) on a dry-weight basis. However, there may be complications under […]

  • The use of geographic terms or locations in trademarks is a frequent consideration among clients seeking to establish a unique and recognizable brand identity. The appeal of geographic designations often lies in their potential to create a strong association between a product or service and a particular area known for certain qualities, such as Napa for […]

  • Ensuring brand or trademark protection is a top priority for businesses in any industry. However, the marijuana industry faces unique challenges due to the dichotomy between state-level legality and federal restrictions. As more states legalize recreational and medical marijuana, the eventual nationwide acceptance of marijuana and cannabis-derived products seems inevitable. Nevertheless, the current regulatory landscape presents […]

  • The United States Patent and Trademark Office (USPTO) plays a crucial role in the protection of intellectual property rights, promoting innovation, and safeguarding consumer interests. As part of its ongoing efforts to maintain an efficient and effective trademark system, the USPTO has proposed an increase in trademark fees. This post identifies the major proposals, examines the […]

    Categories: Trademark Fees
  • Under the Lanham Act, which is the primary federal trademark law in the United States, and the Trademark Manual of Examining Procedure (TMEP), the strength or weakness of a trademark is crucial in determining its scope of protection. The strength of a trademark is often evaluated along a spectrum of distinctiveness, with generic marks at one […]

  • Incorporating the terms “America,” “American,” or “USA” into a trademark can be an effective strategy for various reasons. At the heart of this decision often lies the desire to associate the brand or product with the ideals, values, and sentiments commonly linked with America. This includes connotations of quality, innovation, freedom, opportunity, and more. Firstly, these […]

  • A widespread myth or misconception in the realm of trademark law is the belief that registering a business name with a state agency automatically provides trademark protection. This misunderstanding likely arises from a lack of knowledge about the distinctions between business name registration and trademark registration, as well as the different purposes these registrations serve. In […]

    Categories: FAQ's
  • A common myth or misconception about federal trademark registration is the belief that once a trademark is registered with the United States Patent and Trademark Office (USPTO), it will cover all goods and services across all trademark classifications. This misconception may stem from a lack of understanding about how the trademark registration system works and the […]

    Categories: FAQ's
  • A prevalent myth or misconception surrounding trademarks is the belief that a federal trademark registration issued by the United States Patent and Trademark Office (USPTO) is mandatory to protect a trademark. This misunderstanding may arise from a lack of knowledge about the United States’ dual trademark system, which recognizes both federal registration and common law rights. […]

    Categories: FAQ's
  • A USPTO-issued federal trademark registration only provides protection within the United States. To protect your trademark in other countries, you need to register the trademark in each jurisdiction where you want protection. One common myth or misconception regarding federal trademark registration is that once a trademark is registered with the United States Patent and Trademark Office […]

    Categories: FAQ's
  • Trademark infringement on Amazon occurs when a third-party seller uses a trademark that is identical or confusingly similar to a registered trademark belonging to another party. Some examples of trademark infringement on Amazon include: These are just a few examples of trademark infringement on Amazon. It’s important for brand owners to regularly monitor Amazon’s platform and […]

  • Brand Gating refers to a process used by Amazon to control and limit the number of third-party sellers that are allowed to sell a particular brand’s products. This is done to ensure the authenticity of the products being sold, and to protect the brand’s reputation and intellectual property, including a brand’s registered trademarks. Under the Amazon […]

  • The Trademark Trial and Appeal Board (TTAB) is a specialized administrative body within the United States Patent and Trademark Office (USPTO) that handles disputes related to trademarks. An ex parte appeal with the Trademark Trial and Appeal Board (TTAB) is a type of legal proceeding before the TTAB in which only one party is heard. It […]

    Categories: FAQ's
  • The penalties for trademark infringement can vary depending on the specific circumstances of the case and the laws of the jurisdiction in which the case is being heard. Let’s first start with understanding what trademark infringement is: The Lanham Act defines trademark infringement as the unauthorized use of a trademark that is likely to cause confusion […]

  • The defenses to trademark infringement are arguments that can be raised by the alleged infringer to defend against a claim of trademark infringement. Some of the common defenses to trademark infringement are: These are just a few of the defenses to trademark infringement that may be raised in a case. The specific defenses available will depend […]

    Categories: FAQ's
  • Trademark infringement is a violation of the exclusive right granted to a trademark owner to use their trademark in commerce. To establish trademark infringement, the following elements must be shown: (1) that the plaintiff owns a valid trademark; (2) that the defendant is using a trademark that is identical or substantially similar to the plaintiff’s trademark; […]

  • Trademark infringement is the unauthorized use of a trademark that is identical or substantially similar to a registered trademark, in a manner that is likely to cause confusion or deceive consumers as to the origin of goods or services. This can occur when a party uses a trademark that is identical or similar to another party’s […]

    Categories: FAQ's
  • Trademark cybersquatting is the act of registering, trafficking in, or using a domain name that is identical or similar to a distinctive trademark or service mark of another party, with the intent to profit from the goodwill of the trademark owner, or with the intent to mislead consumers as to the source of the goods or […]

  • The range of remedies for trademark infringement, trademark dilution, and false advertising under the Lanham Act include These are the main remedies available under the Lanham Act for trademark infringement, trademark dilution, and false advertising. The specific remedy or remedies that are available in a given case will depend on the specific circumstances of the case […]

  • False advertising is a form of unfair competition under the Lanham Act. It occurs when a company makes false or misleading claims about its products or services in advertising or other commercial speech. False advertising can take many forms, including making false claims about the characteristics, benefits, or quality of a product or service, making misleading […]

  • Trademark dilution is a form of trademark infringement under the Lanham Act. It occurs when a trademark is used in a way that lessens its unique qualities, even if the use does not cause consumer confusion as to the source of the goods or services. For example, if a company uses a famous trademark in an […]

  • A trademark cease and desist letter is a legal demand letter sent to an person or business that is using a trademark or trade name in a manner that is likely to cause confusion or trademark dilution with the rights of the trademark owner. The letter typically requests that the recipient stop using the infringing mark […]

  • An Actual Use trademark application is a type of trademark application filed with the United States Patent and Trademark Office (USPTO) when the applicant has already begun using the trademark in commerce in connection with the specified goods or services. An Actual Use trademark application provides evidence of the use of the trademark, which is important […]

    Categories: FAQ's
  • The eBay Verified Rights Owner (VeRO) Program is a way for intellectual property owners to report listings on eBay that are selling counterfeit, infringing, or otherwise unauthorized items. The VeRO program is designed to help protect the rights of intellectual property owners and maintain the integrity of the eBay marketplace. As a participant in the VeRO […]

    Categories: FAQ's, eBay VeRO
  • The Etsy Reporting Portal is designed to prevent intellectual property infringement by providing a way for intellectual property owners to report suspected infringements on the Etsy marketplace. This helps to ensure that products listed on Etsy are legitimate and authorized for sale, and helps to prevent the sale of counterfeit or infringing products. Here are some […]

  • The Walmart Brand Portal was designed to prevent intellectual property infringement by providing brands and manufacturers with tools and resources to monitor their products and intellectual property on the Walmart marketplace. This helps to ensure that products listed on the Walmart platform are legitimate and authorized for sale, and helps to prevent the sale of counterfeit […]

  • The Amazon Brand Registry was designed to prevent intellectual property infringement by providing brands and manufacturers with tools and resources to manage their products and intellectual property on the Amazon marketplace. The program is intended to help ensure that products listed on Amazon are legitimate and authorized for sale, and to prevent the sale of counterfeit […]

  • An Intent to Use (ITU) trademark application is a type of trademark application filed with the United States Patent and Trademark Office (USPTO) when an applicant has a bona fide intention to use a trademark in interstate commerce, but has not yet started using the trademark in interstate commerce. An Intent to Use trademark application is […]

    Categories: FAQ's
  • The USPTO Supplemental Register is a secondary register of trademarks maintained by the United States Patent and Trademark Office (USPTO). It is a list of trademarks that have not yet achieved full protection on the USPTO Principal Register but that the owner has claimed exclusive rights to use in commerce. Trademarks on the Supplemental Register do […]

    Categories: FAQ's
  • The USPTO Principal Register is the primary register of trademarks maintained by the United States Patent and Trademark Office (USPTO). It is a list of trademarks that have been granted the highest level of protection under U.S. Trademark Law. Trademarks on the Principal Register receive nationwide legal protection, meaning that the owner of the trademark has […]

    Categories: FAQ's
  • Yes, many people mistakenly assume they can only apply to register one trademark, but you can apply to register many different versions of the same trademark – word marks, design marks, word plus design marks, sound marks, collective marks, certificate marks, trade names, trade dress, etc. The different versions of a trademark are called “related marks” […]

    Categories: FAQ's
  • Gmail Authenticated Brand Logos is a service provided by Google that allows businesses and organizations to authenticate their emails and display their logo next to the email address in the recipient’s inbox. To use the service, you will need to apply through the Google Workspace Marketplace and provide information about your brand and upload your logo. […]

  • Beginning December 3, 2022, United States Patent & Trademark Office (USPTO) trademark applicants will have only three (3) months (instead of six (6) months) to respond to office actions issued during the examination of a trademark application. Applicant’s may request one three-month extension per office action for an additional $125 filing fee. The option to file […]

    Categories: USPTO Announcement
  • A response to a USPTO trademark office action typically includes arguments and evidence to address any issues raised by the examiner in the office action. This can include evidence of the distinctiveness or acquired distinctiveness of the mark, or evidence that the mark does not conflict with any existing registered or pending marks. If you have […]

  • A trademark search is a process of researching and analyzing existing trademarks to determine if a proposed trademark is available for use and registration. The search typically involves looking for similar or identical trademarks that are already registered or pending registration in the same or similar industry, ensuring the proposed trademark is registrable and protectable, determining […]

  • Before diving into the answer, it is important to first understand the differences between a word mark, a design/logo mark, and a composite mark (word plus design/logo). What Are The Different Types of Trademarks? A word mark is a type of trademark that consists of words, letters, or numbers that identify and distinguish a product or […]

    Categories: FAQ's
  • An arbitrary trademark is a type of trademark in which the word or phrase being registered has no relationship to the goods or services being offered. For example, “Apple” as a trademark for computers has no relationship to the actual fruit apple. This is in contrast to a suggestive trademark or descriptive trademark, which suggest or […]

  • A USPTO (United States Patent and Trademark Office) trademark application refusal is a decision made by the USPTO to deny registration of a trademark based on one or more specific grounds set forth in the Trademark Act. A “Trademark application refusal” is simply a generic term used in connection with an Office Action issued by the […]

  • Generally, a trademark that incorporates a geographic designation is registrable where the trademark has attained a secondary meaning (or acquired distinctiveness), or where they lack geographic significance or meaning in association with the goods or services. But, if the trademark that incorporates a geographic designation is used primarily to describe the location where the product is […]

  • Yes, you can trademark a foreign word with the United States & Patent Trademark Office (USPTO) as long as it is used in a manner that identifies and distinguishes the source of the goods or services you are offering. However, you must provide a translation of the foreign word when you file your trademark application. Keep […]

  • As a preliminary note, many people mistakenly assume they can only apply to register one trademark, but you can apply to register many different versions of the same trademark. It all depends on what your trademark looks like, how you use it, and how many applications you want to submit. You can file as many trademark […]

    Categories: FAQ's
  • A suggestive trademark is a type of trademark that suggests, but does not describe, the characteristics or qualities of the goods or services for which it is used. Suggestive trademarks are considered to be more distinctive and therefore more likely to be registered with the USPTO and protected by Trademark Law than descriptive trademarks, which directly […]

  • A trademark acquires secondary meaning when the consuming public primarily associates the trademark with the source of the goods or services rather than the goods or services themselves. This typically occurs through extensive and exclusive use of the trademark in the marketplace over a significant period of time. Additionally, advertising and promotional efforts can also contribute […]

  • A generic trademark is a term that is commonly used to refer to the goods or services that it represents, rather than acting as a source identifier. For example, “aspirin” is a generic term for a type of pain reliever and cannot be trademarked. Generic terms cannot be trademarked because they are considered to be part […]

  • Along with arbitrary trademarks, fanciful trademarks are generally the easiest to register with the USPTO (United States & Trademark Office).  Fanciful trademarks are also afforded the broadest scope of trademark protection. A fanciful trademark is a made-up word or phrase that has been coined specifically as a trademark. Fanciful trademarks are typically the strongest type of […]

  • Descriptive trademarks mostly show up in trademarks as an adjective or adverb that will describe the functions, characteristics, size, uses, or other elements of a product and/or service. Descriptive trademarks do not satisfy the main function of trademarks, which is to identify the source of the product. Using “Toboggan” for the red sled you intend to […]

  • A determination of trademark priority is often how the United States Patent & Trademark Office (USPTO), courts and businesses settle rights over trademark disputes. Trademark priority refers to the principle that trademark rights typically belong to the first person or entity to use the mark in commerce. The entity or person who first sells goods or […]

  • A trademark is a word, phrase, symbol, or design, or a combination of these elements, that is used to identify and distinguish the goods or services of a business from those of another. The elements of a trademark can include: What is the importance of conducting a trademark search? Conducting a trademark search before launching a […]

    Categories: Get Started
  • Trademark maintenance refers to the ongoing actions that a trademark owner must take in order to keep their trademark registration active, valid and enforceable. This includes using the trademark in commerce, monitoring for and taking action against infringing uses of the trademark, and renewing the registration every ten years. One important aspect of trademark maintenance is […]

    Categories: Get Started
  • A federal trademark opposition is a legal proceeding before the United States Patent and Trademark Office (USPTO) in which a person or entity (the “Opposer”) seeks to prevent another person or entity (the “Applicant”) from registering a trademark. The Opposer argues that the trademark sought to be registered by the Applicant is likely to cause confusion […]

    Categories: Get Started
  • A USPTO trademark Office Action is a formal letter issued by an examiner at the United States Patent and Trademark Office (USPTO) in response to an application for a trademark registration. The letter will typically include a list of issues or problems that the examiner has identified with the trademark application, such as a likelihood of […]

    Categories: Get Started
  • Trademark monitoring is important because it helps to ensure that a person or company’s trademarks are not being used without permission, which can dilute the strength of the trademark and damage the company’s brand. Additionally, trademark monitoring can help a person or company identify and take action against potential infringements, which can prevent legal disputes and […]

    Categories: Get Started
  • Enforcing a trademark involves taking legal action to prevent others from using your trademark or a confusingly similar mark without your permission. To enforce a trademark, the owner must first determine if there is standing to claim trademark infringement. This can be done by conducting a trademark search to see if there are any similar marks […]

    Categories: Get Started
  • Planning For The Trademark Search Whether seeking to register a federal or state trademark, planning for the trademark search is a fundamental first step for any business owner or entrepreneur intending to launch a new service or product in the marketplace.  We cannot emphasize strongly enough the importance of planning for a trademark search prior to […]

    Categories: Get Started
  • Trademark cancellations are legal proceedings in which a party seeks to cancel a registered trademark. A trademark cancellation proceeding can be initiated by either the owner of the trademark or a third party who believes that the trademark should not have been granted registration. If a trademark is cancelled, it is removed from the trademark registry […]

    Categories: Get Started
  • A trademark assignment is the transfer of ownership of a trademark from one party to another.  Trademark assignments can be done voluntarily, by agreement between the parties, or by operation of law, such as a merger or acquisition of a company. When a trademark is assigned, the new owner will be able to use the mark […]

    Categories: Get Started
  • A federal trademark registration is a form of intellectual property protection in the United States that is granted by the United States Patent and Trademark Office (USPTO). A federal trademark registration gives the owner exclusive rights to use a particular trademark in connection with the goods or services specified in the registration, throughout the entire United […]

    Categories: Get Started
  • The United States Patent & Trademark Office (USPTO) uses what is called the Nice Classification of Goods and Services. The Nice Classification is the standard used by the majority of countries around the world that register trademarks. Basically, the USPTO divides trademarks into 45 different categories. 34 of these categories identify products and 11 categories identify […]

  • Whether you are contemplating organizing a new business, or positioning your existing business to launch a new product or service in the marketplace, selection of a new trademark is the most critical phase in establishing trademark rights.  Under Trademark Law, a trademark is a word, phrase or symbol used to identify and distinguish the source of […]

  • Registering your trademark is a complex procedure that involves your application moving through various stages of prosecution. More information on general timelines for registering a trademark can be viewed here - Current trademark processing wait times.

    Categories: FAQ's
  • Having a federally registered trademark creates valuable trademark rights. Learn more what that entails here.

    Categories: FAQ's
  • A common misconception is that having a trademark means you legally own a particular word or phrase and can prevent others from using it. However, you don’t have rights to the word or phrase in general, only to how that word or phrase is used with your specific goods or services.

    Categories: FAQ's
  • Our trademark attorneys can perform and complete a comprehensive state and federal (including all US territories) trademark search within 3 business days. Once the trademark search is completed, we will provide you with a detailed trademark search report with an analysis of the results.  We will then discuss the trademark search results with you over the […]

    Categories: FAQ's
  • A federal trademark could last forever. The length of an initial trademark registration is 10 years. There are post registration maintenance documents that must be timely filed between the 5th and 6th years of registration, and there are renewal documents that must be filed between the 9th and 10th years of registration, and every 10 years […]

    Categories: FAQ's
  • The word “trademark” can refer to both trademarks and service marks. A trademark is used for goods, while a service mark is used for services.

    Categories: FAQ's
  • Registration of your trademark is not mandatory; however, trademarks on the USPTO Principal Register receive significantly stronger protection than state trademark and unregistered or “common-law” trademarks.  That said, most brand registry programs either strongly suggest of require an online seller to obtain a federal trademark registration before enrolling in their programs. 

    Categories: FAQ's
  • No. An applicant located outside of the United States may file for a United States trademark registration on the same basis as a US citizen or US business.  However, if you are foreign-domiciled, you are required to use a US trademark attorney to file your trademark-related submissions with the USPTO.

    Categories: FAQ's
  • As the United States Patent & Trademark Office (USPTO) defines it, a trademark is any word, phrase, symbol, design, or a combination of these things can be trademarked as long as the word, phrase, symbol, or design identifies the source of the goods and/or services in order to distinguish them from the goods and/or services of another

    Categories: FAQ's
  • The United States Patent and Trademark Office (USPTO) governs and oversees the application and registration of federal trademarks in the United States.

    Categories: FAQ's
  • “Used in interstate commerce” refers to the use of a trademark in connection with goods or services that are sold or transported across state lines. To be considered “used in interstate commerce,” the trademark must be used in a manner that demonstrates the trademark owner’s use of the trademark in connection with the sale or transportation […]

    Categories: FAQ's
  • Once you submit your Trademark Application, the United States Patent & Trademark Office (USPTO) examining attorney will need to decide if the trademark is eligible for registration. If the mark is deemed ineligible for registration, or if the examiner feels that additional information is required before deciding whether or not a verdict can be made about […]

    Categories: FAQ's
  • Contact a Trademark Attorney! Office Actions can be complicated and your trademark lawyer will help you determine the nature of the Office Action (is the problem procedural or substantive) and the likelihood of surmounting it.

    Categories: FAQ's
  • Yes, you are required to use your trademark in interstate commerce with the goods or services applied-for before the USPTO will register the trademark.  In other words, you must be using the trademark in connection with the goods or services listed in your trademark application, and that use must be in the regular course of trade. This […]

    Categories: FAQ's
  • Under Trademark Law, not all trademarks are created equal, and so not all trademarks are entitled to protection. The extent of trademark protection depends on whether the trademark is a common law, state or federal trademark registration.  Protection also depends on how strong the trademark is, which in turn depends on its distinctiveness. The USPTO often […]

    Categories: FAQ's
  • To maintain your trademark registration with the United States Patent & Trademark Office (USPTO) and ensure its protection in the marketplace, you should: Note that this is not a comprehensive list, and it is recommended to consult with one of our trademark attorneys for personalized guidance on maintaining and protecting your trademark. Trademark Maintenance Between the […]

    Categories: FAQ's
  • Trademark rule requires domicile address for all filers and also requires foreign-domiciled applicants and registrants to have a U.S.-licensed attorney. If you are foreign-domiciled, you are required to use a US trademark attorney to file your trademark-related submissions with the USPTO.

    Categories: FAQ's
  • TTAB is an acronym for Trademark Trial and Appeal Board.  The TTAB is a neutral body that functions like a federal court for trademark matters at the United States Patent and Trademark Office (USPTO). The TTAB administrative trademark judges are authorized to determine a party’s right to register a trademark with the USPTO. The TTAB is […]

    Categories: FAQ's
  • Use of the TM and SM symbols may be governed by local, state, or foreign laws and the laws of a pertinent jurisdiction to identify the marks that a party claims rights to. The federal registration symbol, the R enclosed within a circle (®), may be used once the mark is actually registered in the USPTO. […]

    Categories: FAQ's
  • Engaging a trademark attorney who is licensed to practice law in the US can advise you about many important legal issues. These include: The USPTO has published a page on its website entitled “Hiring a US Licensed Attorney” for additional information. Beware of Scammers There are many companies and other individuals lurking online offering trademark services […]

    Categories: FAQ's
  • The time it takes to register a trademark with the United States Patent and Trademark Office (USPTO) can vary depending on a number of factors, such as the complexity of the application and the workload of the USPTO. On average, the process can take between 10-14 months to several years from the time the application is […]

    Categories: FAQ's
  • No, you are not required to register your trademark with the USPTO to have trademark rights. Common law trademark rights can be established through use of a trademark in commerce, regardless of whether the trademark is registered with the USPTO. However, even though obtaining a federal registration issued by the United States Patent & Trademark Office […]

    Categories: FAQ's
  • Our trademark attorneys regularly advise new business owners and entrepreneurs launching a new product or service whether their brand names, product lines and brand designs are available for use in their intended marketplace and can be properly registered and protected (see trademark search).

  • Trademark ownership may be one of the most lucrative and recognizable assets for any major company. Even still, a trademark's life is incredibly fragile as any improper mishandling or illegal trademark assignment can completely invalidate the mark. Another important distinction that must be made between trademarks and other financial assets: trademarks require monitoring and care to maintain their value and legitimacy. An illegal trademark assignment often results as a lack of care for the upkeep of a trademark  and may even be considered an assignment-in-gross.

    Categories: FAQ's
  • As mobile device applications are now comprising a multi-billion dollar industry, mobile marketing has now become a cutting-edge business tool and a premier branding resource. Smartphones are now the top form of communication. In fact, consumers spend close to 90% of the time on their smart phones using mobile applications.  Many researchers also predict increased surges in the […]

    Categories: FAQ's
  • Look at some of the basic information surrounding a federal trademark. Including what a trademark protects, why you should obtain a federal trademark, a comparison of a trademark to a patent or copyright, and how our trademark attorneys can help you in the process of obtaining a federal trademark.

  • In short, yes you can trademark a sound. The Lanham Act, states that a trademark is “any word, name, symbol, or device, or any combination thereof, used in commerce to distinguish his or her goods, from those manufactured by others to indicate the source of the goods.” Thus, federal trademark law does not specifically prohibit a […]

    Categories: FAQ's, Can I Trademark?
  • While it may seem that trademark priority is simple to understand, a priority battle between two trademarks can be costly and complicated. First, U.S. trademark rights are based on use of a mark in commerce, not registration. In other words, the first person to obtain a federal registration of a trademark with the USPTO does not guarantee that owner an absolute priority or exclusivity over that mark. Under common law (law generated by judges instead of statutes) the date a trademark was first used in commerce has priority to use that mark in the geographic area the mark is being used.

  • As part of our “Can You Trademark” series, we will look at a wide range of topics that entrepreneurs and businesses may be interested in obtaining a federal trademark registration for. This series is merely designed as a broad overview of if it is possible to trademark the topic for the blog. To suggest our next topic, tweet @nextrendlegal, […]

  • A generic trademark is the name of a product/service/brand name which is the actual name for the product/service/brand name. Examples include: APPLE for apples, or LAW FIRM for a law firm. A generic term that could even obtain secondary meaning will not help that term become eligible for trademark protection. The rationale behind this prohibition is that to allow a single business, entrepreneur or inventor, the exclusive right to the generic term would give them a monopoly and an unfair competitive advantage over other businesses.

  • Starbucks, the massive Seattle based coffee company worth about $16.447 billion in 2014, sent the owner of a small town brewery outside of St. Louis, Missouri, a cease and desist letter to prevent them from infringing a Starbucks trademark. The trademark in question, FRAPPUCCINO.

  • As the cannabis industry in the United States grows and becomes more acceptable, medically and recreationally, our trademark attorneys are getting many inquires as to whether a business or individual can you register a trademark for marijuana products? Especially in states were marijuana is legalized for recreational use, entrepreneurs looking to make millions from marijuana products, […]

  • “Famous Jameis” is betting on the future by cashing out on his nickname. Jameis Winston, potential No. 1 overall NFL draft pick, has filed to trademark “Famous Jameis.” This nickname was given to him during his time at Florida State, where he won the Heisman Trophy and only lost one game as a starter in 2013. Winston’s trademark attorney noted they have taken steps to protect Winston’s intellectual property rights. He also commented that this is a long-term investment they “hope to utilize down the line.”

  • Technology has radically altered interactions between companies and customers, and customers’ expectations resulting in hot new trends in franchising. In the education arena, franchises are looking bright this year. This sector is booming as people question the education their children are receiving at public schools and look to enhance the curriculum through online and offline tutoring services and […]

    Categories: Business
  • There is no doubt Marshawn Lynch is profiting greatly off of his Beast Mode apparel line.   He is a branding genius. Even if you don’t know who Marshawn Lynch is you have probably heard the phrase “I’m just here so I won’t get fined.” Lynch is the running back for the Seahawks as well as the […]

    Categories: Branding
  • Branding a business is a critical aspect to building any successful business. Patagonia’s brand, unlike many who believe consistency, avoiding controversy should triumph, is somewhat paradoxical at times.  The company is in the business of making and selling merchandise, however, it is known for advertising its products by telling consumers not to buy its products. In […]

    Categories: Branding
  • A recent trademark opposition and trademark cancellation involved the case Cervezas Cuauhtemoc Moctezuma SA de CV v. Branden Weaver which addressed a lack of good faith (or bona fide) intent to use a trademark in commerce at the time of filing the trademark application.  Trademark law states that a person who has a bona fide intention, […]

  • In March 2014, the makers of Alamo Beer filed a lawsuit for trademark infringement in the Western District of Texas. Alamo Beer Company alleged that a competitor was using a confusingly similar trade dress (likelihood of confusion), including a similar design depicting a silhouette of the Alamo.  In this case, the State of Texas, owner of […]

  • Even the all powerful BCS can be issued a trademark refusal.  The inauguration of the College Football Playoffs will occur without a registered trademark in place.  BCS Properties, LLC, the trademark applicant, will be unable to reap the immensely valuable benefits garnered by federal trademark registration.  BCS’s trademark attorney submitted multiple trademark applications (word mark, design […]

    Categories: Trademark Refusals
  • For more than 20 years, there has been a movement to rid sports of nicknames and mascots that refer to Native Americans. Many teams have voluntarily changed their name, such as: Miami University RedHawks (formerly Redskins until 1996); Marquette University Golden Eagles (formerly Warriors until 1994); St. John’s University Red Storm (formerly Redmen until 1994); University […]

    Categories: Trademarks
  • Gone are the days where rapid innovation occurred solely in Silicon Valley. While California is still responsible for about 25% of new patents in the nation (the most of any state), many cities from coast to coast are industry leaders in innovation. Here are some cities that have been national leaders in a patent category for the […]

    Categories: Business, Innovation
  • The way the system has worked is we connect to the internet through a internet service provider (ISP) who gives us the information we want without allowing preferential treatment to some websites. Massive companies like ESPN or Netflix, are treated with equal internet speeds as your small business. However, there have been recent developments in the […]

    Categories: Business, FAQ's
  • Every business owner obviously goes through the process of hiring new employees. Maybe you have a process that you have been using since starting your business, or maybe you don’t really have a clue or have never thought about refining your process. One thing is clear, it is a waste of time (and money) when you […]

    Categories: Business
  • What brand of ketchup is in your pantry? What brand of ketchup is at your favorite restaurant? Odds are it was probably Heinz ketchup. It seems everywhere you go, if you want some ketchup, its going to be Heinz. This begs the question, can anyone compete with the Pittsburgh based company? Former Brown University students Scott […]

    Categories: Branding, Business
  • Charles Best got the idea to start Donors Choose as a history teacher at a Bronx high school. He was funding school supplies for the kids with his own money. So he thought of a website where he and his colleagues can post projects that are in need of funding, onto a website where donors can […]

    Categories: Trademarks
  • What could be a surprise to some, Nike was seen as the most innovative companies in the last year. Normally one may think that the term “innovative company” would be reserved for the Apples and Microsofts of the world, however, the elite athletic company was seen as the king of innovation. Nike has a way to […]

    Categories: Business
  • Do you have a great business idea or a new unique product ready to be launched?  Have you exhausted all the traditional channels, such as family, friends, personal loans, to raise the necessary capital to launch the idea or product?  Are you weary about selling a equity interest in your business to an unknown third party […]

    Categories: Branding