Category: Trademark Filing

General, How To's, The Basics, Trademark Filing, Trademark Filing

The Trademark Registration Process for Businesses Based in Philadelphia

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 wisest ways for you to […]

How To's, Trademark Filing

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 a Notice of Abandonment in detail). […]

Trademark Filing

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 trademark application under the name […]

General, Trademark Filing

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 an intent-to-use trademark application can […]

Trademark Filing, Trademark 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 goods or services that you […]

General, Trademark Filing

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 types of entities that can […]

General, Trademark Filing

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 application, as trademark documents are […]

General, Trademark Filing

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 be particularly unexpected to trademark […]

How To's, Trademark Filing

All Foreign Trademark Applicants Must Hire U.S. Attorneys

In one of the United States Patent and Trademark Office’s biggest policy changes in decades, the USPTO will require foreign applicants to hire U.S. counsel to register their trademarks. There are a few exceptions, so if you are foreign counsel advising your clients, or if you own a business headquartered in another country and are considering applying for trademark registration […]

How To's, The Basics, Trademark Filing, Trademark Filing

How To File a Trademark – Trademark Filing Process Considerations

One of the first steps you should take to protect your brand is to file a trademark on items such as your name, slogan and logo. This is done by submitting a trademark application to the United States Patent and Trademark Office (USPTO). You (or preferably your attorney) can file a trademark through an online portal on the USPTO website. […]

How To's, Trademark Filing

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? Read the article below carefully before accepting the Examiner’s “descriptiveness” decision. Everyone wants their trademark to be a strong and unique mark, like KODAK, APPLE or NIKE, but product might ultimately fail if […]

How To's, Trademark Filing

How to Respond to A Trademark Office Action

So, you filed your trademark application months ago and your new business has started on its way. You are eagerly awaiting to hear from the United States Patent and Trademark Office. After waiting for so long, you finally see an email from the USPTO, only to find out that the USPTO has issued an “Office Action” and your trademark has […]