Morris Turek's Trademark Attorney Blog

What is Acquired Distinctiveness for Purposes of Trademark Registration?

acquired distinctiveness

The concept of “acquired distinctiveness” (also referred to as “secondary meaning”) is extremely important when it comes to registering a non-distinctive trademark with the United States Patent and Trademark Office (USPTO).  The following are common examples of non-distinctive trademarks:

Non-distinctive trademarks are normally only eligible for registration on the Supplemental Register (as opposed to the Principal Register).  But, there are circumstances under which non-distinctive marks can be registered on the Principal Register.  Those circumstances have to do with the concept of acquired distinctiveness under what is known as Section 2(f) of the Trademark Act.

Read moreWhat is Acquired Distinctiveness for Purposes of Trademark Registration?

What is a Surname Trademark Refusal by the USPTO?

Surname

A trademark that is primarily merely a surname is only eligible for registration with the United States Patent and Trademark Office (USPTO) on the Supplemental Register, unless it has acquired distinctiveness or “secondary meaning” in the minds of the purchasing public.  A “surname” is also often referred to as a “last name” or “family name.”  Some very common examples of surnames include “Smith,” “Johnson,” “Williams,” and “Jones.”  However, there are millions of other surnames among the US population, many of which are shared by only a handful of people.  As such, it’s not always clear when a trademark would be considered primarily merely a surname.

Read moreWhat is a Surname Trademark Refusal by the USPTO?

What is a Disclaimer for USPTO Trademark Registration?

Disclaimer

After you file your trademark application with the United States Patent and Trademark Office (USPTO), you may receive an 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 moreWhat is a Disclaimer for USPTO Trademark Registration?

What is a Primarily Geographically Descriptive Trademark?

geographically descriptive trademark

A primarily geographically descriptive 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 moreWhat is a Primarily Geographically Descriptive Trademark?

What is a Deceptively Misdescriptive Trademark?

Deceptively Misdescriptive Trademark

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 moreWhat is a Deceptively Misdescriptive Trademark?

What is a Deceptive Trademark for Purposes of Trademark Registration?

Deceptive Trademark

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 moreWhat is a Deceptive Trademark for Purposes of Trademark Registration?

U.S.-Licensed Attorney Helping Foreign Trademark Applicants

u.s.-licensed attorney

I’m U.S.-licensed attorney Morris Turek and I assist individuals and businesses located outside of the United States with their important U.S. trademark matters.  Since 2005, I’ve helped clients located on six continents (no Antarctica penguins have hired me yet) file their trademark applications, renew their trademark registrations, and defend their trademark rights.  As a U.S.-licensed attorney, I’m legally able to work with foreign individuals, businesses, and organizations no matter where in the world they happen to be.  I’ve implemented affordable and predictable flat fee trademark pricing for the vast majority of my services, and I offer numerous payment methods so that they can choose the one that’s most cost-effective for them.  In addition, I can easily communicate with non-U.S. residents through Skype, my Facebook business page, email, and the old-fashioned telephone.  I just want to make it easy for people residing outside of the U.S. to contact me and to work with me on all of their various trademark-related matters.

Read moreU.S.-Licensed Attorney Helping Foreign Trademark Applicants

What are Common Law Trademark Rights?

common law trademark

Common law trademark rights are an extremely important concept in trademark law.  In the United States, owners of common law trademark rights have significant protections against others who may seek to use a confusingly similar trademark to advertise and sell related products or services.  These rights can be enforced in a court of law and monetary damages may be awarded to a trademark owner whose common law rights were found to have been violated by someone else.

Read moreWhat are Common Law Trademark Rights?

How Do I Answer a Petition for Cancellation?

Answer a Petition for Cancellation

If you’ve stumbled across this blog post, you probably find yourself needing to answer a petition for cancellation that’s been filed against your trademark registration.  As you may know, a trademark cancellation is filed with the Trademark Trial and Appeal Board (TTAB) for the purpose of challenging the continued federal registration of your trademark.  Unless you have legal grounds for filing a motion to dismiss the cancellation (which is pretty rare), the first thing you’ll need to do after the TTAB institutes the cancellation proceeding is to draft and submit an answer.

Read moreHow Do I Answer a Petition for Cancellation?