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  • danaldickson

10 bite-size tips for trademark application success

Updated: Jan 5, 2021

I’m wrapping up 2020 with a handful of tips that didn’t quite fit into my other posts this year but that might help you along the way in protecting your marks. Enjoy!

In the context of filing trademark applications:

(1) Not everyone who can sign an application is authorized to sign a Response. But the same people authorized to sign a Response are also authorized to sign express abandonments.

(2) If a mark is eligible for registration on the Principal Register, you cannot choose to register it on the Supplemental Register instead.

(3) Submission of a list of third-party registrations or even a copy of a commercial search report does not make those registrations of record. You have to submit copies of the registrations, themselves (or their complete electronic equivalent).

(4) A 30-day letter extends ONLY the deadline for filing a Response, not the deadline for filing an appeal to the Trademark Trial and Appeal Board.

(5) Organizations that can sue or be sued in court may apply to register trademarks, but their operating divisions cannot.

(6) Section 66(a) (“Madrid”) applications cannot be registered on the Supplemental Register.

(7) While third-party registrations may be persuasive evidence, third-party applications “have no probative value other than as evidence that the applications were filed.” TMEP Section 710.03.

(8) If you file under Section 66(a), you generally cannot change the filing basis. For information on the very narrow and limited exception to this rule, see TMEP Sections 806.03(a) and 1904.09.

(9) USPTO examining attorneys cannot abandon your application for you via Examiner’s Amendment.

(10) Applicants that are U.S. entities may not specify “company” as their entity type. Unlike wording such as “corporation” or “unincorporated association,” the word “company” is indefinite.

This information was posted on December 21, 2020 and was accurate as of the date of writing. However, the law changes frequently, and readers should not rely solely on general online information but instead should consult a licensed attorney by asking questions about their specific issues when they need legal advice.

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