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

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  • 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 […]

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  • 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).  Arbitrary 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 Terms 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 […]

  • 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 […]

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  • Get Started – Trademark Cancellations

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  • 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
  • Get Started – Register a Federal Trademark

    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 intent to use the trademark in connection with the sale or […]

    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
  • 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.

  • 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.

  • 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.

  • 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, […]

    Categories: FAQ's
  • “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 […]

  • 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
  • In our increasingly mobile environment, many business owners, entrepreneurs now spend tens, if not hundreds, of thousands of dollars in the development and branding of a website to promote their business and/or sell their products over the internet.  Thus, for the majority of business owners, entrepreneurs it is critically important that the website to show up […]

    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