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, a response to a trademark office action, or a response to a suspension inquiry, you may be able to revive your abandoned trademark application by filing a Petition to Revive.
If you’ve stumbled across this article, 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) under Section 1(b) 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 trademark application process.
