How to respond to a trademark office action that refuses or rejects your trademark application.

When responding to a trademark office action, you need to consider:

1. any statements you submit to the Trademark Office may be later used against you;
2. the statements of the trademark examining attorney might be used against you if you do not present argument or evidence to clarify or rebut the examiner’s position;
3. if there is a “likelihood of confusion” with another trademark;
4. if the trademark may be “descriptive” or generic term for the stuff in your goods and services;



5. any other grounds for refusal, for example, formalities, trademark samples, ornamentation, geographic significance, deceptiveness, false connections, etc.;
6. what kind of evidence was presented by the trademark examiner;
7. what types of evidence are available to you to support your trademark;
8. what will be the impact of limiting or clarifying your trademark;
9. what relationship you have to any third-party who’s trademark may be mentioned in the office action; and
10. whether and how you should interview the trademark examiner.

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How to avoid mistakes when filing your US trademark.

The US trademark registration form is deceptively simple. The online form can be completed in about 30 minutes. More time is needed to correctly answer the questions that use legal “terms of art,” which can mislead first time users. These traps for the unwary can prevent registration or lie dormant until much later to prevent broad assertion of the trademark registration rights. Just being aware of these issues can help avoid them. [Read more]

3 Factors any Business Plan should Consider Before Filing a Patent Application

Factor 1: Can you beat your competition in the marketplace by being First to Market?

When your invention budget is limited, you can opt to invest the maximum money in marketing and forego patent protection. Eventually, the marketplace will copy your success. While your invention and success is unknown, copying is less likely. Since your competitors will waste time discovering your invention’s success and waste time copying your invention, your invention will enjoy a limited time when it is unique in the marketplace. A carefully crafted marketing program can leverage this advantage both before and after your competition enters the marketplace. [Read more]

How To Find a Patent Attorney

Why is a patent attorney giving me advice on how to find a patent attorney?

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International Patents: Managing Patent Rights Outside of the United States

It is a common misnomer that you can apply for an international patent. Patents must be filed, examined and issued in each country where patent protection is sought. However, the right to file a foreign patent application is automatically preserved by treaty for 12 months. This time can be extended by a PCT request for up to 30 months. During this time, you can determine whether patent protection may be valuable to pursue in any of the participating foreign countries. [Read more]