Morris Turek's Trademark Attorney Blog

How Do I Amend a Trademark Application?

amend a trademark application

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.

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What is Excusable Nonuse of a Trademark?

excusable nonuse

Excusable nonuse of a trademark occurs when circumstances beyond the control of a trademark owner causes a temporary interruption in the use of the mark.  The concept of excusable nonuse most frequently arises when it comes time for the owner of a U.S. trademark registration to file the Section 8 Declaration of Use or the Section 71 Declaration of Use with the United States Patent and Trademark Office (USPTO).  Normally, both of these declarations require verification that the registered trademark is in use in commerce in order to prevent the registration from being canceled.

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Can You Amend a Trademark Registration?

amend a trademark registration

You can sometimes amend a trademark registration issued by the United States Patent and Trademark Office (USPTO) just like you can sometimes amend a trademark application before it becomes a registration.  All requests for amendment of a registration must be “for good cause,” which essentially means you need to have a legitimate reason for the amendment.  In addition, a request to amend a trademark registration must be accompanied by the required government filing fee and be supported with the declaration language found in 37 C.F.R. § 2.20.

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What is the Section 8 and 9 Renewal for a Trademark?

section 8 and 9 renewal

The Section 8 and 9 Renewal is a combined document filed with the United States Patent and Trademark Office (USPTO) for the purpose of maintaining and renewing a trademark registration.  The Section 8 and 9 Renewal is only applicable to trademarks that are registered under Section 1(a) (use in commerce) or Section 44(e) (U.S. registration based on a foreign trademark registration).  If your trademark is registered with the USPTO under Section 66(a) (extension of protection through the Madrid Protocol), then you would instead (1) file a Section 71 Declaration of Use with the USPTO, and (2) renew your international registration directly with the World Intellectual Property Organization (WIPO).

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What is the Section 71 Declaration of Use?

Section 71 Declaration of Use

The Section 71 Declaration of Use is a document filed with the United States Patent and Trademark Office (USPTO) for the purpose of maintaining a registered extension of protection in the United States under the Madrid Protocol.  The Section 71 only applies to trademarks that are registered with the USPTO through the Madrid Protocol.  If your trademark is registered under Section 1(a) (use in commerce) or Section 44(e) (U.S. registration based on a foreign trademark registration), then you are required to file the Section 8 Declaration of Use rather than the Section 71 Declaration of Use.

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What is the Section 8 Declaration of Use for a Registered Trademark?

Section 8 Declaration of Use

The Section 8 Declaration of Use is a document filed with the United States Patent and Trademark Office (USPTO) for the purpose of maintaining a trademark registration.  The Section 8 only applies to trademarks that are registered under Section 1(a) (use in commerce) or Section 44(e) (U.S. registration based on a foreign trademark registration).  If your trademark is registered with the USPTO under Section 66(a) (extension of protection through the Madrid Protocol), then you would need to file the Section 71 Declaration of Use rather than the Section 8 Declaration of Use.

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Am I Required to Hire a Trademark Attorney Near Me?

trademark attorney near me

If you’re seeking legal assistance with a trademark matter, one of the first things you might do is type “trademark attorney near me” into Google or another search engine and see whose website pops up.  And there’s absolutely nothing wrong with that.  Such a search would probably reveal at least a couple of nearby attorneys who you could further research and look into.  Maybe you’ll find a local trademark attorney who seems friendly, competent, reliable, trustworthy, and affordable.  But maybe you won’t.  And that’s perfectly OK.  You know why?  Because you can work with any trademark attorney you want regardless of whether the attorney is located down the street or across the country.  This is especially true if you’re seeking trademark search or trademark registration services, or if you require assistance with a trademark office action, trademark opposition, or trademark cancellation.

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What is a Geographically Deceptively Misdescriptive Trademark?

geographically deceptively misdescriptive

A geographically deceptively misdescriptive trademark (which is different than a primarily geographically descriptive trademark) is ineligible for federal registration with the United States Patent and Trademark Office (USPTO) on either the Principal Register or Supplemental Register.  The Lanham Act (which governs trademark registration in the US) specifically prohibits the registration of trademarks that are “primarily geographically deceptively misdescriptive” of the products/services with which they are used.

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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.

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