Trademark Registration

After you file your trademark application with the United States Patent and Trademark Office (USPTO), you may receive a trademark office action requesting that you provide a disclaimer of a particular element of your trademark.  Usually, the requested disclaimer is for words or phrases that comprise a portion of your trademark, but the request could also be to disclaim a design or portion of a design.  The good news is that dealing with a such a request is generally quite straightforward and non-controversial.

Read more

A primarily geographically descriptive trademark (not to be confused with a geographically deceptively misdescriptive trademark) is only entitled to registration with the United States Patent and Trademark Office (USPTO) on the Supplemental Register, unless it has become distinctive of the products or services listed in the trademark application.  If it has become distinctive, then it would be eligible for registration on the Principal Register.  I invite you to review my blog post titled “Supplemental Register vs. Principal Register – What is the Difference?” so that you understand the many important differences between the two registers and the rights afforded by each one.

Read more

A deceptively misdescriptive trademark (as opposed to a deceptive trademark) is only eligible for registration with the United States Patent and Trademark Office (USPTO) on the Principal Register if it has acquired distinctiveness or “secondary meaning” in the minds of consumers.  Otherwise, a deceptively misdescriptive trademark is only entitled to registration on the Supplemental Register.  I encourage you to read my article titled “Supplemental Register vs. Principal Register – What is the Difference?” to learn more about the important distinctions between the two registers maintained by the USPTO.

Read more

A deceptive trademark (as opposed to a deceptively misdescriptive trademark) is not eligible for registration with the United States Patent and Trademark Office (USPTO) under any circumstances.  The Lanham Act (which is the law that governs federal trademark registration) specifically prohibits the registration of a trademark that “consists of or comprises deceptive matter.”  This means that the USPTO is legally obligated to refuse registration of your trademark if it determines that your mark is wholly deceptive or includes a deceptive term.

Read more

The Notice of Allowance is a very important milestone for a trademark application that was filed under Section 1(b) (intent to use).  The Notice of Allowance essentially indicates that (1) the United States Patent and Trademark Office (USPTO) approved your application after examination, (2) your application was published for opposition, and (3) a third-party did not prevent the registration of your trademark.  Although the Notice of Allowance brings you one step closer to the successful registration of your trademark, it’s critical that you understand what you need to do next in order to complete the registration process.

Read more