Morris Turek's Trademark Attorney Blog

What is a Merely Descriptive Trademark Refusal?

merely descriptive trademark

After you file your trademark application, the United States Patent and Trademark Office (“USPTO”) may issue a trademark office action indicating that your mark is being refused registration on the basis that it’s merely descriptive of your products and/or services.  This merely descriptive trademark refusal is based on the trademark examining attorney’s belief that your mark merely describes a characteristic, feature, quality, function, or purpose of the products/services listed in your application.  Descriptiveness refusals are extremely common because people who file their own trademark applications or use a trademark document preparation service like LegalZoom, Trademarkia, or Trademark Engine aren’t generally aware that registering merely descriptive words and phrases as trademarks can be very difficult, if not impossible.

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What is the Section 15 Declaration of Incontestability for a Trademark?

section 15 declaration of incontestability

The Section 15 Declaration of Incontestability is a document that’s filed with the United States Patent and Trademark Office (USPTO) for the purpose of making a federally registered trademark incontestable.  The Section 15 Declaration may only be filed if (1) the mark is registered on the Principal Register (not the Supplemental Register), (2) the mark is still in use in commerce, and (3) the mark has been in continuous use for five consecutive years subsequent to the date of registration.  Once the USPTO acknowledges the Section 15 Declaration, the trademark owner’s right to use its mark in commerce in connection with the products/services listed in the registration becomes incontestable.

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Supplemental Register vs. Principal Register – What is the Difference?

Supplemental Register vs. Principal Register

The issue of Supplemental Register vs. Principal Register frequently arises during the US trademark registration process.  If you’ve read my article titled “What is the Supplemental Register for US Trademarks?,” you already know that the United States Patent and Trademark Office (USPTO) maintains two separate trademark registers.  To recap, the Principal Register is reserved for trademarks that are considered under the law to be “distinctive.”  In contrast, the Supplemental Register is for non-distinctive marks, which are trademarks that have not yet acquired distinctiveness or “secondary meaning” in the minds of consumers.  I encourage you to read my previous article regarding the Supplemental Register so that you better understand the information presented here.

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What is an Amendment to Allege Use?

Amendment to Allege Use

An Amendment to Allege Use is a sworn declaration filed with the United States Patent and Trademark Office (USPTO) indicating that your trademark is currently in use in commerce in connection with all of the products/services recited in your trademark application.  The Amendment to Allege Use requires you to (1) set forth the date on which your mark was first used anywhere in the United States, (2) set forth the date on which your mark was first used in interstate commerce, and (3) submit a proper specimen showing actual use of your mark.  If you filed your application on an intent-to-use basis, then you will eventually need to demonstrate actual use of your trademark by filing either an Amendment to Allege Use or the Statement of Use.

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What is the Supplemental Register for US Trademarks?

 

What is the Supplemental Register for US Trademarks?

The Supplemental Register is provided by the United States Patent and Trademark Office (USPTO) as a way to federally register certain types of US trademarks.  Although it doesn’t offer all of the benefits and protections of the Principal Register, it’s still a valuable tool that should be utilized under appropriate circumstances.

The USPTO maintains two separate trademark registers.  The Principal Register is reserved for trademarks that are considered “distinctive.”  On the other hand, the Supplemental Register is for trademarks that have not yet acquired distinctiveness or “secondary meaning” in the minds of consumers.

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What is Proof of Use for Trademark Registration?

Proof of Use for Trademark

Proof of use for trademark registration is something that’s often misunderstood by people who choose to file their own trademark applications.  It’s not uncommon for people to contact me after receiving a trademark office action from the United States Patent and Trademark Office (USPTO) indicating that registration of their trademark is being refused because the examples of use they submitted (referred to as “specimens”) are insufficient or improper.  This causes significant delays in registering their trademark and, in some cases, can even lead to their trademark application going abandoned and having to start the trademark registration process all over again.

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What is Use in Commerce?

What is Use in Commerce?

One of the questions I hear most as a trademark attorney is “What is use in commerce?”  The concept of “use in commerce” is vitally important in US trademark law, especially with regard to federal trademark registration.  Needless to say, the “use in commerce” definition is something all trademark applicants should be aware of.

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Is Trademark Engine Legit for Filing My Trademark Application?

Is Trademark Engine Legit?

What is Trademark Engine?

Recently, many people have been asking me the following question: “Is Trademark Engine legit when it comes to filing a trademark application?”  Trademark Engine is a trademark registration service that can be best summed up by its very own language located on the bottom of its website:

Trademark Engine provides information and software only. Trademark Engine is not a “lawyer referral service” and does not provide legal advice or participate in any legal representation.

Furthermore, Trademark Engine sets forth the following disclaimer on its website:

Trademark Engine is not a law firm and none of the information on this website constitutes or is intended to convey legal advice.  Likewise, our customer service representatives are here to assist you, but they may not provide any legal advice to you.  General information about the law is not the same as advice about the application of the law in a particular factual or legal situation.  Individual facts and circumstances as well as legal principles including but not limited to the ones referenced on this website can affect the outcome of any given situation.  Trademark Engine cannot and does not guarantee that an application will be approved by the USPTO, that a mark will be protected from infringement under common US trademark law, or that any ensuing litigation or dispute will lead to a favorable outcome.  If you want or have an interest in obtaining legal advice with respect to a specific situation or set of circumstances, you should consult with the lawyer of your choice.

Now that you know Trademark Engine isn’t a law firm and can’t provide you with any valuable legal advice, guidance, or recommendations, never mind address the many important questions and concerns you likely have regarding trademarks and trademark registration, you may be wondering what Trademark Engine does have to offer.

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Likelihood of Confusion – What Does It Mean in Trademark Law?

Have you received a trademark office action indicating that your trademark application has been rejected because of a likelihood of confusion with another trademark?  In other words, has the trademark examining attorney found your mark to be “confusingly similar” to another mark?  Under Section 2(d) of the Trademark Act, the Trademark Office is obligated to refuse registration of your trademark if it’s likely to cause confusion with a mark in an existing registration.  Of course, what’s considered “confusingly similar” can be very subjective indeed.  For example, if you want to register ABC for clothing and somebody already owns a federal registration for ABC for electric generators, the Trademark Office will probably not reject your application since clothing and electric generators aren’t products that would generally be perceived as being similar, related, or emanating from the same source.  But, what about ABC for clothing and ABC for watches?  In that instance, would there be a likelihood of confusion?

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How Much Does a Trademark Cost? – The Concept of “Relevant Costs”

So, how much does a trademark cost?  If you’ve read my article titled “How Much is a Trademark? – Understanding the Relationship Between Cost, Risk, and Value,” you know I recommend performing a careful cost-benefit analysis before choosing a company or law firm to help you acquire a United States trademark registration.  After all, cost is often a major concern for many individuals, businesses, and organizations seeking to register a trademark.  That said, I’d like to address the related concept of “relevant costs” and show you how these costs factor into your efforts to acquire federal trademark protection for your particular name, logo, or slogan.

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