Trademark Registration

A registered extension of protection of a trademark in the United States is a trademark that is registered with the United States Patent and Trademark Office (USPTO) under Section 66(a) in accordance with the Madrid Protocol.  The registered extension of protection is treated almost identically to a trademark that is registered under Section 1(a) (use in commerce) or Section 44(e) (U.S. registration based on a foreign trademark registration) with only a few very minor exceptions.  In other words, essentially all of the benefits and protections afforded a trademark registered under Section 1(a) or Section 44(e) equally apply to a trademark registered under Section 66(a).

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There are many benefits associated with getting a trademark registration for the names, logos, and taglines you use (or intend to use) in connection with the advertising and sale of your products or services.  Personally, I like to think of a US trademark registration as an insurance policy.  You purchase automobile insurance in case you’re involved in a car accident.  You buy homeowners insurance in case your house goes up in flames.  And you purchase health insurance in case you become seriously ill.  Of course, you hope you never have to use your insurance policies, but you’re extremely glad you bought them if a tragedy or disaster does occur.  Similarly, a trademark registration is like insurance on your trademark.  It protects one of your most valuable business assets and assists you in recovering the monetary damages you’ll likely suffer as a result of an unexpected infringement or misappropriation by someone else.

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A surrender of a trademark registration is a voluntary request that the United States Patent and Trademark Office (USPTO) cancel the registration.  There are a handful of reasons why you might choose to voluntarily surrender your trademark registration.  For example:

• You’re no longer using your trademark in commerce and have no plans to resume use
• A trademark cancellation or concurrent use proceeding was filed against your registration
• You entered into a settlement agreement with a third-party that requires surrender of your trademark registration

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A trademark that falsely suggests a connection with individuals (living or dead), institutions, beliefs, or national symbols is ineligible for registration with the United States Patent and Trademark Office (USPTO).  The Lanham Act (which is the federal law that governs trademark registration in the U.S.) requires the USPTO to refuse registration of a trademark if it concludes that a false suggestion of a connection exists.  Unlike other types of rejections (such as merely descriptive and surname refusals), a showing of acquired distinctiveness cannot overcome a false suggestion of a connection refusal under any circumstances.

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You’ll receive a trademark specimen refusal if the specimens you submitted to the United States Patent and Trademark Office (USPTO) are inappropriate or insufficient to demonstrate use of your trademark in connection with the products and/or services listed in your trademark application.  If the specimens don’t meet the USPTO’s strict requirements, the examining attorney will issue a trademark office action explaining why the specimens cannot be accepted.

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