Why Choose Not Just Patents? Facts Matter

Before ApplyTM: We recommend verifying that your trademark and trademark application are strong before applying for a trademark. We have identified 5 factors that contribute to a  strong trademark and a good investment:

1. Verify Inherent Strength  Does the mark consist of inherently distinctive element(s) that can be claimed for exclusive use?

Marks that are merely descriptive are hard to register and hard to protect. Section 2(e) refusals are very common refusals. Whether a trademark is merely descriptive depends on the goods and services description. Facts Matter.

2. Verify Right to Use  Does the mark have a likelihood of confusion with prior marks (registered or unregistered)?

Section 2(d) refusals are very common refusals. Facts Matter.

3. Verify Right to Register  Does the mark meet the USPTO rules of registration? (Does not have any grounds for refusal?)

4. Verify Specimen  Is the mark used as a trademark or service mark in the specimen?

Specimen refusals are very common refusals. The right type of specimen for any particular application depends on what the goods or services are. Facts Matter.

5. Verify Goods and Services ID   Is the goods/services identification definite and accurate? Is the goods/service ID as broad as it should be under the circumstances or will a narrower description distinguish it better?

ID refusals are common too but getting the right description identifies the scope of protection. Too narrow of a description can yield narrow rights. Too broad of a description can result in an unnecessary likelihood of confusion with someone else. Facts Matter.


INVESTIGATE THE FACTS: HAVE A PROACTIVE TM


Plan For A Successful, Strong Trademark Application By Preparing In Advance of Applying


A plan for a strong trademark is one that looks ahead to issues like:

Can I claim exclusive rights to use this trademark?

Does this trademark meet the qualifications for being registered on the USPTO Principal Register?

Is this trademark strong enough that others would want to license it from me?

Does this trademark have potential to extend to other product lines?

Is this mark inherently distinctive?

Are there others users of this mark that could prevent me from using this mark or would sue me or prevent me from getting federal registration because they can prove they are prior users?

Are there valid reasons for someone to oppose or cancel the mark because the mark doesn’t qualify for protection or because they have superior rights?

Would the USPTO find a likelihood of confusion with someone else’s registered or pending trademark and prevent my registration of this mark?

Would a court enforce the use of this trademark?

Do I have to somehow acquire distinctiveness for this mark before it would be recognized as being protectable? Does this mark use such common terms that it would be called a weak trademark?

Is this mark descriptive or deceptive or geographically descriptive?

Do I use the mark in a way that increases my rights or am I using it in a way where it does not function as a trademark?


These are all good questions to consider before adopting a trademark for use because if you are planning to succeed, it may be a good idea to be able to work that plan rather than abandoning it. [The abandonment rate of trademark applications at the USPTO (trademarks that did not issue) is very high, about half of applications never register.

All of the above questions involve fact-related answers. Knowing the rules is really important, being able to apply the rules to facts is even better.


Can Your Trademark Application and Registration Survive In A Harsh Business World?


StrongTrademark Application/Registration: An application that protects legal rights and sets the ground work for a strong trademark registration protects investments in a product or service that can last through a long product life.


Weak Trademark Application: An application that does not meet minimum filing requirements or that only meets minimum requirements for filing (all the right blanks filled in and no direct search hits) may not ever issue or may not protect legal rights.

The abandonment rate of trademark applications at the USPTO (trademarks that did not issue) is very high, some years close to 50%. Many applications do not meet federal trademark law because they have a likelihood of confusion with other registered or pending marks, are merely descriptive or generic, have specimens that do not show the trademark functioning as a trademark, have inadequate specimens of use and many other reasons.

Many abandonments are from intent-to-use applications where the Alleged Amendment of Use (AAU) or the Statement of Use (SOU) were never filed with the USPTO or were not accepted (problems with specimens). Getting a trademark registration does not have to be a gambling process!!

 

The USPTO helps to enforce  prior strong trademarks during the application of later-filed marks. A trademark examiner will refuse registration for later applying marks that have a likelihood of confusion with a prior registered mark or a prior pending trademark. A registered mark on the Principal Register has a presumption of distinctiveness or inherent distinctiveness. Even a mark on the Supplemental Register can be used to refuse a later-filed mark on the Principal Register. Being first to register and do it right!


Not Just Patents ® and Aim Higher® are registered trademarks of Not Just Patents LLC for Legal Services.


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Not Just Patents®

Aim Higher® Facts Matter

Not Just Patents® LLC

PO Box 18716

Minneapolis, MN 55418  

1-651-500-7590    

WP@NJP.legal


Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Cease and Desist

Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Opposition Pleadings    UDRP Elements    


Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension  Advantages of ®  ApplyTM.com

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Trademark-Request for Reconsideration

Why Not Just Patents? Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d  TMOG Trademark Tuesday

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


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Call: 1-651-500-7590 or email: WP@NJP.legal. This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us