Not Just Patents TMk® trademark services

can help your brand register instead of being refused

Refusal rates are very high for USPTO trademark applications.

(Refusal rates From USPTO.gov trademark dashboard for FY2023)

Why Hire A Private Trademark Attorney?

What can an attorney do for me?

(From https://www.uspto.gov/trademarks-getting-started/why-hire-private-trademark-attorney)

Attorneys can provide crucial legal advice

An attorney who is licensed to practice law in the U.S. and experienced in trademark law can advise you about many important legal issues. These include:

• Determining if your chosen trademark can be legally protected
• Determining the appropriate filing basis for your trademark application
• Preparing and filing a trademark application with the USPTO that is complete and accurately identifies your goods and services
• Selecting an appropriate specimen that shows how your trademark is used in commerce
• Responding to questions and refusals to register your trademark from a USPTO trademark examining attorney
• Helping you understand the scope of your trademark rights and the best ways to enforce them
• Defending against challenges brought by others against your trademark
• Preparing and filing documents with the USPTO to maintain your registration.
• Although USPTO trademark examining attorneys can provide information about the federal registration process, USPTO employees cannot give you legal advice.

Attorneys can conduct trademark clearance searches

Did you know that if someone registers a similar trademark with the USPTO before you do, they can potentially block your trademark from registering? And that even when similar trademarks aren’t federally registered, they could ultimately prevent you from using and/or registering your trademark?

An attorney can let you know if your trademark should be available for your use and registration and decrease the possibility of you having costly legal problems by conducting a comprehensive clearance search for potentially conflicting trademarks and providing a legal opinion.

A comprehensive search includes searching the following sources for trademarks that could potentially conflict with yours:

• The USPTO's database of federally registered trademarks
• U.S. state trademark registration databases
• Other sources for common law rights unregistered trademarks.
• This search occurs before filing your application.

Attorneys can help you enforce and maintain your trademark rights

It's your legal responsibility to monitor and protect your trademark from infringement by other parties. An attorney can help you understand the legal scope of your trademark rights and advise you on the best way to monitor and enforce those rights. He or she can tell you specifically what to do if you discover other parties are using and infringing your trademark or if other trademark owners claim that you are infringing their trademarks.

After registration, an attorney can also help ensure that all required registration maintenance documents are timely and accurately filed, so you can maintain your registration for as long as you use your trademark.

Attorneys can represent you at the USPTO's Trademark Trial and Appeal Board

If you disagree with an examining attorney’s final refusal to register your trademark, you can file an appeal of that decision with the Trademark Trial and Appeal Board (TTAB).

If a party believes that either they’d be harmed by registration of your trademark or your existing trademark registration should be canceled because it conflicts with theirs, they can challenge the registration of your mark by filing an opposition or cancellation proceeding with the TTAB. Likewise, you can challenge someone else’s trademark application or registration at the TTAB by filing an opposition or cancellation. Oppositions and cancellations are trial proceedings similar to litigation in federal court.

Appeals and opposition and cancellation proceedings all have specific procedures and strict deadlines. A U.S.-licensed attorney who is experienced in trademark law and knowledgeable about TTAB proceedings can navigate these often complex proceedings, present your best case or defense, and help you settle the dispute, if appropriate.

Why  Be First to File for a USPTO Trademark Registration? Brand protection and positioning

• To protect your investment.
• Keep momentum. Losing brand protection or even just losing momentum during a new product launch can be devastating.   
• Amazon Brand  Registry-The first to file their USPTO trademark registration information with Amazon Brand Registry will have greater influence and control over their brand’s product listings on Amazon. Amazon Brand Registry assists in better search results and proactive brand enforcement. Amazon eligibility requirements for the US are:

• Trademark organization: United States Patent and Trademark Office (USPTO)

• Statutes: Trademark must have a live registration issued and active in the principal register

• Text-based marks: 1 - Typeset Word(s)/ Letter(s)/ Number(s); 4 - Standard Character Mark

• Image-based marks: 3 - An Illustration Drawing which includes Word(s)/Letter(s)/ Number(s); 5 - Words, Letters, or Numbers in a Stylized Form

• Under the USPTO filing system, a prior filed application has the presumption of correctness and the presumption that the applied-for-owner was using the trademark at least as early as the filing date of the application. A constructive use date on an intent to use application can be a powerful ally.
• BE FIRST: A prior filed application or registration  by someone else may have its goods and services description written broadly and may cover your goods and services even though their business and your business do not interfere with each other. Opposing, cancelling or negotiating with someone in this situation who doesn’t have bad faith intentions or actions can be very difficult because having a broad application or registration is not a violation of trademark law.
• It can be costly and time-consuming to oppose or cancel an application even if you  are the True Owner and have common law priority of use of the trademark or a similar trademark. The trademark opposition process can take over a year to complete if you are trying to stop someone else who was first to apply.
• A bad-faith filer or trademark squatter can possibly enforce his or her rights against the True Owner for trademark infringement.
• A bad-faith first filer or trademark squatter can possibly ask foreign customs officials to detain or confiscate products of the True Owner that were manufactured in that country for export.

Is your trademark important? Is it worth protecting? For many businesses, a trademark is one of their most valuable pieces of property. The tools to protect trademark rights take time to learn how to use properly. Experience matters. Not Just Patents has a good record of both protecting trademark applications from opposition and a good record of winning oppositions. The trademark opposition process requires knowledge of the rules and procedure.

Why Should I Have A Not Just Patents Trademark Attorney Answer My Office Action? We are very budget conscious. Saving an application filing date and the application saves money and time. We are able to fix a lot of refusals and overcome the descriptiveness refusals or identification problems or other common problems with trademark applications. Often after fixing problems, we usually go on to help the same businesses find better ways to protect other intellectual property assets such as other trademarks, patents and copyrights. A lot of repeat business is a sure sign that people are happy with our services. Call and ask us some questions and we can help you find ways to protect your rights in very budget conscious ways.

Can every trademark refusal or office action be overcome? Sometimes trademark applications have such huge problems with them, such as a strong likelihood of confusion problem with a competitive trademark, that no answer will overcome the refusal or should overcome. Getting refused and starting over with a better mark should be a much better strategy than getting sued for a likelihood of confusion or getting your web site shut down because it has a likelihood of confusion with someone else’s site.

The law that a trademark examiner uses to write a refusal  is based on the same trademark law that the owner of the other mark could use to sue  you. The trademark office and trademark examiners are trying to prevent future liability problems when they refuse applications; changes in trademark rules and procedure that affects applications come directly from lawsuits and other proceedings. The answers to refusals often require a knowledge of the appropriate strategy as well as trademark law. Experience matters.

If a trademark application is ‘Published for opposition’ does that mean it was opposed? Under U.S. Trademark law a trademark or service mark must be published for opposition before it can be registered on the Principal Register. This does not necessarily mean that it will be opposed or has been opposed. The TESS (TESS FAQ) does not show if a mark has been opposed but the TSDR does show it at the

Status field where it shows as Status:  An opposition after publication is pending at the Trademark Trial and Appeal Board. For further information, see TTABVUE on the Trademark Trial and Appeal Board web page.

Looking for samples of Notice of Opposition or other trademark opposition samples?

TTABVUE at http://ttabvue.uspto.gov/ttabvue/ (Trademark Trial and Appeal Board Inquiry System) is searchable by  proceeding number, application number, registration number, mark, party, and correspondent. For instance, if one enters ‘Monster or some other party name in the ‘party’ field and clicks search, all proceedings that involved ‘Monster’ as a party come up in a chart with Proceeding Filing Date as the left-most column. Click on a proceeding number to select a proceeding. Proceedings that start with a 92 are cancellation proceedings and proceedings that start with a 91 are opposition proceedings.  (Proceedings that start with 8 are appeals or extension of time to oppose.) At the bottom of the page for each individual search result for any  opposition or cancellation proceeding, document #1 (click on FILED AND FEE or the number ‘1’) is the opening pleading or the Notice of Opposition (opposition) or Petition for Cancellation (cancellation).

At the top of the document window, click on the printer icon to print or click on the download arrow to download the individual file being viewed.

How Often Are Trademarks Opposed?

Oppositions and Cancellations are Uncommonly Instituted But Are Real Threat Once Instituted

As reported in The USPTO Trademark Case Files Dataset: Descriptions, Lessons, and Insights, January 2013.

The vast majority of published applications proceed directly to registration without any opposition. An opposition proceeding instituted for only 2.8 percent of 4.0 million published applications with prosecution event-data coverage in a recent USPTO study. For those applications no longer pending, the data indicate that the opposition was sustained [the trademark did not issue]  in about 44.8 percent of observations in which an opposition was instituted.

A cancellation proceeding is instituted for only about 1.1 percent of the 3.4 million registrations with prosecution event-data coverage. For those registrations with proceedings no longer pending, the data indicate that a cancellation was granted in about 44.9 percent of observations in which a cancellation proceeding was instituted.

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