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New York Law

Trademark Expungement and Reexamination

By Hiring A Trademark Attorney
The USPTO has established ex parte expungement and reexamination proceedings for cancellation of a registration, in whole or in part, when the required use in commerce of the registered mark has not been made.  This is big news, because it creates an entirely new option for trademark applicants whose applications for registration have been refused under Section 2(d), (likelihood of confusion) with a prior registered mark. As an attorney practicing before the USPTO for over twenty years, I have often been confronted with the situation where my client’s trademark application was refused on grounds of likelihood of confusion with a prior trademark that was registered for a very extensive listing of goods. Upon review, it sometimes appeared that the registered mark was only being used in connection with a few of the many goods for which it was registered, and...
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International Expansion and Your Trademark

By DIY Trademark
If you know early on that you intend to expand into foreign markets, it is wise to try to secure your rights in those markets as early as possible. One way to do this is to file an application for International Registration under the Madrid Protocol, an international trademark registration regime administered by the World Intellectual Property Organization.  Again, to be prudent, you would want to conduct trademark searches in those countries where you seek to obtain trademark rights before commencing use of the trademark in those markets. Nike ran into an issue as it grew and expanded into Italy. A cobbler in Italy had already been using the trademark “swoosh” for many years prior to Nike’s creation. Because trademarks are a form of property, rights in many jurisdictions are determined by priority– which party was the first to use...
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