There are several motivations behind applying for a federal trademark registration–legal objectives, practical reasons, and national deterrence are all primary considerations when filing for a trademark. As a Philly-based business, you are a competitor in the epicenter of one of the East Coast’s largest cities, and investing in a trademark can be one of the […]
Gerben Law Firm's Trademark Blog
This trademark blog and informational section of the website is meant to provide you with answers to commonly asked questions about trademark searching, filing, and registration.
How to Revive a Dead Trademark
If your own trademark has fallen into ‘dead’ or ‘abandoned’ status, you may be able to file a petition to revive it. In order to file the petition, you must show that the abandonment was unintentional, and you must submit the petition within 60 days of the Notice of Abandonment (learn how to respond to […]
Who Should Sign a Trademark Application?
Finding the proper person to sign a trademark application is more complicated than it seems. In fact, it’s something that attorneys get wrong all the time. Here are the two most common scenarios for selecting a proper signatory for your application. 1. If filing a trademark as a Corporation or LLC If you’re filing a […]
The Benefits of Intent-to-Use Trademark Filings
An intent-to-use trademark application is a trademark filing made before you actually have any sales of your products or services in the marketplace. There are a few scenarios in which this type of filing is more beneficial than a standard in-use application. Three Reasons Intent-To-Use Applications Are Beneficial There are three main reasons that filing […]
How to Describe Goods and Services in a Trademark Application
One of the most critical questions in a trademark application is, “What are the goods and services associated with your trademark that you would like to protect?” This question is so critical because it sets the rights and scope for your trademark protection. United States trademark law protects your trademark as it relates to the […]
Who Should Own a Trademark?
The very first question on any trademark application is who will the owner of the trademark be? This is an incredibly important question to get correct, because if you answer it incorrectly, the resulting registration can be completely void and worthless. Who can own a federal trademark registration in the United States? There are various […]
Recent USPTO Rule Change No Longer Allows PO Boxes for Applicant Addresses
A recent USPTO policy change states that trademark applicants are no longer allowed to use PO boxes as the address of record in a trademark application and must now use a street address. This change arguably creates a problem for a lot of home-based businesses that would rather not list their home address in their […]
Non-US Companies (and Citizens) Cannot File Trademarks Without a U.S. Attorney
On August 3rd, 2019, the United States Patent and Trademark Office implemented a rule requiring foreign companies and individuals domiciled outside of the United States to use a licensed U.S. attorney to file trademark applications, renewals, and almost any other document before the USPTO. This affects every company and individual outside of the U.S., but it can […]
All Foreign Trademark Applicants Must Hire U.S. Attorneys
Effective August 3rd, 2019, the USPTO will require foreign applicants, registrants, or parties to a trademark proceeding to be represented by a U.S. attorney.
How To File a Trademark – Trademark Filing Process Considerations
How do you file a trademark application? Should you hire an attorney? This article discusses the overview of the registration process and helpful tips about filing a trademark application with the United States Patent and Trademark Office.
How to Respond to Descriptiveness Refusal on a Trademark Application
Did your company receive an Office Action refusing your trademark registration based on the grounds that it is “merely descriptive” under Section 2(e)(1) of the Lanham Act? Think carefully before accepting the Examiner’s “descriptiveness” decision.
How to Respond to A Trademark Office Action
If you’ve received an Office action from the United States Patent & Trademark Office (USPTO) after you’ve submitted your trademark application, you may very well be wondering “What do I do now?” The USPTO, by issuing an Office action, is pointing out a problem with your application – one that may lead to its refusal […]