Morris Turek's Trademark Attorney Blog

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.

Read moreWhat is the Section 71 Declaration of Use?

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.

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

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.

Read moreAm I Required to Hire a Trademark Attorney Near Me?

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.

Read moreWhat is a Geographically Deceptively Misdescriptive Trademark?

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 (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 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?