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.
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.
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.
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.
If your trademark application has gone abandoned because you unintentionally failed to timely file the Statement of Use, an Extension of Time, or a response to a trademark office action, you may be able to revive your abandoned trademark application by filing a Petition to Revive.
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.
If you’re reading this article, chances are you need to answer a trademark opposition that has been filed against your trademark application. As you may already know, a trademark opposition is filed with the Trademark Trial and Appeal Board (TTAB) for the purpose of challenging your right to register your trademark. Unless you have a legitimate legal basis for filing a motion to dismiss the opposition (which is fairly rare), the first step you’ll need to take after the TTAB institutes the opposition proceeding is to prepare and file an answer.
Filing an intent to use trademark application with the United States Patent and Trademark Office (USPTO) may be a good option if your trademark is not yet in use in commerce. It’s essentially a way to reserve your right to use a name, logo, or slogan in connection with the advertising and sale of specific products/services. Assuming your intent to use trademark application eventually becomes a trademark registration, all of your rights will date back to the filing date of the application. In other words, filing an intent to use trademark application prevents others from potentially acquiring common law trademark rights in a similar name while your trademark application is going through the registration process.
Filing an extension of time to oppose a trademark application is a relatively easy and inexpensive way to reserve your right to file a trademark opposition. It provides you with more time to carefully consider whether you want to invest your valuable time and money in formally opposing a trademark application. It also gives you time to contact the owner of the trademark application in order to discuss any questions or concerns you may have regarding the trademark or any of the information presented in the trademark application.
The Notice of Allowance is a very important milestone for a trademark application that was filed on an intent to use basis. 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.