Trademark Application

It’s pretty common for clients to ask me about the US trademark application process and what they should expect once their application is filed.  Needless to say, the road to registration can be very bumpy at times, more so for applicants who didn’t perform a trademark search or failed to seek an opinion from an experienced trademark attorney regarding the eligibility of their trademark for registration.  If you’re thinking about navigating the trademark application process yourself, it’s even more important that you fully understand the entire process to maximize your chances of successful registration with the United States Patent and Trademark Office (USPTO).

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An express abandonment of a trademark application is essentially a voluntary request that the United States Patent and Trademark Office (USPTO) terminate the registration process.  There are many reasons why you might choose to expressly abandon your trademark application.  For example:

• You’re no longer using your trademark in commerce
• You no longer have an intention to use your trademark in commerce
• A trademark opposition or concurrent use proceeding was filed against your application
• You entered into a settlement agreement with a third-party that requires express abandonment of your application
• You’ve filed a trademark appeal but decide you don’t want to risk an adverse ruling

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Understanding who should be listed as the applicant of a trademark application in the USPTO is absolutely critical.  Naming the wrong applicant is one of the most common errors made by people who choose to file their own trademark applications.  The worst part is that you generally don’t even know you made the error until you try to enforce your trademark registration against an alleged infringer and, in response, the infringer files a trademark cancellation against your registration on the basis that it’s void.  That’s one nasty surprise you don’t want.  The good news is that this mistake is easily avoidable if you spend some time carefully considering which individual or entity should be named as the applicant.

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Potential clients frequently ask me whether they should trademark a name and logo together in one application.  Well, here’s the answer.  If the name of your product/service is distinctive (i.e. a name that’s eligible for registration on the Principal Register and not only on the Supplemental Register), there’s almost no benefit to applying to register your name and logo together.  In fact, the only benefit is that you’ll save money by filing one trademark application with the United States Patent and Trademark Office (USPTO) rather than two.  But, is saving a few hundred dollars really a good enough reason to seek registration of your name and logo together rather than separately?

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The Section 44(e) trademark filing basis allows the owner of a foreign trademark registration to base its U.S. trademark application on the foreign registration.  As a practical matter, Section 44(e) applies only to a relatively small number of trademark applications filed with the United States Patent and Trademark Office (USPTO).  The vast majority of trademark applications are filed under Section 1(a) (use in commerce) or Section 1(b) (intent to use).  In addition, some trademark applications can be filed under Section 44(d), which allows the owner of a foreign trademark application to use its application to obtain a priority trademark filing date in the United States.  This article explains the benefits of Section 44(e) and the requirements for utilizing this valuable tool.

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