Much like traditional assets such as machinery or real estate, trademarks are assets that can be bought, sold, and transferred. Unlike physical assets, however, trademarks must be transferred in a purposeful way to ensure that the underlying meaning, or “goodwill”, is also transferred. A trademark could be a word, a phrase, a symbol, or even […]
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.
What Booking.com Means for Trademark Owners
The U.S. Supreme Court held that the addition of “.COM” to a generic word could function as a protectable trademark, despite the generic word being incapable of acting as a protectable trademark. While this decision opens the door for brands like BOOKING.COM to potentially qualify for trademark protection, proving those rights could be incredibly difficult […]
Can You Purchase a Trademark?
Question: Can you purchase a trademark? Answer: Yes, you can purchase a trademark from another person or entity. Trademarks are a form of intangible property that can be sold and bought, just like real estate. That said, there are very specific requirements for purchasing a trademark and acquiring a proper chain of title. If you […]
How Do I Claim an Abandoned Trademark?
Question: How do you claim an abandoned trademark? Answer: In order to claim an abandoned trademark, you must follow the registration process from the beginning and submit your own application for the trademark. However, it’s important to carefully evaluate the trademark and consider why the last applicant allowed it to abandon. We often see people […]
How Long Does a Trademark Last?
Question: How long does a trademark last? Do they expire? Answer: Once a trademark registration is granted by the USPTO, it will last five years before another filing is required. However, if you shut down your business or stop offering your goods or services before then, the trademark will be considered abandoned from a legal […]
Can You Use a Trademark That Has Been Rejected by the USPTO?
Question: Can you use a trademark that has been rejected by the USPTO? Answer: Yes. If your trademark has been refused by the USPTO, you can still use it in the marketplace. However, if it was refused because the government considered it to be too similar to another mark, then it’s important to study the judgement carefully […]
Which Trademark Symbol Should I Use?
Question: Which trademark symbol should you use? Answer: If you have obtained a federal registration for your trademark in the United States, you may use the “circled r” symbol: ® If you have not filed an application fore your trademark, or your trademark is still pending, you should use the small capital letters TM next […]
Should a Holding Company Own My Trademark?
In some cases, a holding company may be beneficial to a trademark owner. But is a holding company right for you? Find out more about the purpose of holding companies in this article.
In The News
Who Owns L.A.? Why L.A. Gear’s Campaign to Monopolize the “L.A.” Trademark Will Likely Fail
L.A. Gear, the shoe brand most well-known for its introduction of lights embedded in the soles of its sneaker, has been very busy over the years at the U.S. Patent and Trademark Office (USPTO). While the brand does not enjoy the pop-culture status it once had in the 80’s, its continued robust trademark enforcement campaign […]
Transferring a Trademark From a Personal Name to a Corporation or LLC
Almost 20% of applicants file USPTO trademark applications in their names, personally. But what happens when they launch an LLC or corporation? Transferring a trademark can be tricky – by failing to include specific language and a clear “chain of title” a trademark and its application or registration could face significant challenges.
Trademark Ownership – Who Should Own Your Trademark?
While it may not seem obvious on the surface, the legal question of who owns a trademark registration is one of the crucial legal decisions made when registering and maintaining a trademark registration. It might seem obvious – “If I am the one who came up with the trademark, I am the owner.” However, like […]
Correctable and Incorrectable Errors in Trademark Ownership
These materials were originally presented by Eric Perrott to the American Bar Associations’s Committee on USPTO Operations Relating to the Trademarks and Ex Parte Trademark Practice as a part of their “brown bag” trademark discussions. As trademark attorneys, we have all needed to sift through complicated ownership structures to attempt to figure out exactly who […]