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.
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?
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.
The Section 44(d) trademark filing basis is applicable to certain trademark applications filed with the United States Patent and Trademark Office (USPTO). Most of the time, trademark applications are filed under with Section 1(a) (use in commerce) or Section 1(b) (intent to use). However, Section 44(d) allows the owner of a foreign trademark application to rely on its foreign application to secure a priority filing date in the United States. What does this mean? Well, it means that the owner’s USPTO trademark application filing date will be considered to be the date on which the foreign trademark application was filed.
What does it mean to amend a trademark application? Simply put, it means changing or altering the application in some manner after it’s filed. The way to amend a trademark application is by filing an amendment with the United States Patent and Trademark Office (USPTO). Oftentimes, there are no government fees associated with filing an amendment, but you could still waste a lot of time and effort requesting an amendment that violates the USPTO’s rules and regulations. So, it’s important to understand which kinds of amendments are allowable, when they can be filed, and how to properly file them with the USPTO.