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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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You Can Still See Your Lawyer

By Trademark & Registration Services
With the move to digital meetings and virtually every aspect of life online, we are pleased to let our clients know they can still consult with us face to face. If you have questions about your U.S. trademark or a new trademark you are considering using or applying to register in the United States, you can talk to us. You can have a tele-consult by telephone or video conference. And it doesn’t matter whether you are in New York or Texas, Singapore or Sydney, London or Hong Kong or anywhere in between. As long as you have a phone or an internet connection, we’re here to consult with you about your U.S. trademark questions, United States Patent and Trademark applications and trademark registrations. When it comes to searching and applying to register trademarks with the USPTO, we can help you...
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International TM Considerations: Civil versus Common Law Jurisdictions

By International Trademarks
So, you have a new trademark and you've just applied to register it in the United States. But the USA is just the beginning.  You have a big vision.  You plan to take your brand global.  The question arises: in which countries is it most urgent for you to apply for trademark registration? First Factor: Which are Your Most Important Global Markets? You can't begin to decide in which countries to apply for registration of your mark  until you know which countries you want to provide your goods or services in.  But once you have that figured out, it's time to strategize. In which countries is registration most important? The answer depends, at least in part, on the legal system of each country. Trademark rights in the USA are determined by common law, which is derived originally from England.  Under...
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