News2018-10-26T13:54:03+00:00

Trademark Renewal – What is a Combined Section 8 & 15 Declaration?

Trademark Renewal - What is a Combined Section 8 and 15 Declaration? When should you start thinking about Trademark Renewal for your registered mark? No filings are due for at least 5 years after your mark has been granted registration. Under normal circumstances, your trademark will not be cancelled or expire during that period. In fact, you have up to 6 years to make the required filing. You can even file as late as 6.5 years from the registration date (with an additional surcharge). Certain exceptions are when your trademark is cancelled as the result of a cancellation proceeding, or when you expressly abandon the registration.  After 5 years of registration, the recommended Filing is a Combined Section 8 & 15 Declaration. What is a Combined Section 8 & 15 Declaration? As stated in the title, a combined declaration is actually two declarations - [...]

By |March 6th, 2019|

Common Law Trademark Rights

What are Common Law Trademark Rights? Why are they Important? Common law trademark rights can affect your application and registration: Common law trademark rights are unregistered rights acquired by using the name with the sale of goods and services. Common law trademark rights can be used to block your trademark application. Common law trademark rights can be used to cancel your trademark registration. You can be sued for infringement by someone who has common law trademark rights. Common law trademark rights are unregistered rights that are acquired by using the name with goods and services. Common law trademark rights are important because they can affect both your ability to use and register your trademark. In the United States, Common law trademark rights are established upon use of the mark in commerce.   For example, picture your local restaurant (e.g., [...]

By |February 21st, 2019|

Public Citizen v Trump Complaint National Emergency Declaration

Lawsuit: Public Citizen v Trump Complaint National Emergency Declaration (Copy of the Complaint) On February 15, 2019, Public Citizen Litigation Group filed a Complaint for Declaratory and Injunctive Relief in the United States District Court for the District of Columbia.   The action seeks declaratory and injunctive relief with respect to President Donald Trump’s declaration of a national emergency, the invocation of emergency powers, and the expenditure of funds to construct a border wall. The action claims that the emergency declaration for construction of the wall exceeds President Trump’s authority under the National Emergencies Act. The plaintiffs (who have the necessary standing to sue President Trump) are three landowners located in southern Texas.  The plaintiff-landowners claim they will be harmed by the resulting boarder wall being constructed.  In particular, the plaintiffs claim an "imminent invasion of their privacy and the quiet enjoyment of their land, both during construction [...]

By |February 16th, 2019|

Notice of Trademark Publication

You've Received a Notice of Publication... Congratulations! Your trademark application is scheduled to publish in the Official Gazette. This means that the Examining Attorney at the Trademark Office has carefully reviewed and approved your application under the Trademark Statute and associated Regulations.  Visit the Trademark Status and Document Retrieval (TSDR) database, and enter the Trademark Application Serial Number, to preview the Notice of Publication.  What Happens Next? 30-Day Publication of the Trademark Application for Opposition Other brand owners and affected third-parties have 30 days from the date of publication to oppose your trademark application. If a notice of opposition is filed, your trademark application will be suspended until the opposition proceeding is resolved. If the trademark application is not opposed within 30 days, the application will move forward to registration as a U.S. Trademark. Visit my opposition proceedings page for more information. Intent to [...]

By |February 13th, 2019|

Tips for Naming your Business

Tips for Naming Your Business - An Overview Naming a business is a complex and time-consuming process.  So far, we have discussed Choosing a Company Name for Trademark Use, Legal Considerations When Naming Your Business, and The Stylistic Approach to Naming Your Business.  Here is a summary of our most important tips for naming your business: Tip #1 - Understand Your Company’s Core Message & Values Understanding your company’s core message & values is a fundamental detail in choosing a unique name that will help customers identify your brand.  You will build brand authenticity with a powerful name that reinforces your overall mission and values.   You want to choose words or phrases that align with the goods and services that your company offers.  However, be aware that explicitly defining or describing your goods and services can result in weak trademark protection.  For example, [...]

By |February 4th, 2019|

Double Doink Trademark Application

Double Doink Trademark Application 2018 brought us the “Philly Special” and "Philly Dilly". This year, Philadelphia Eagles’ fans celebrated the “Double Doink” - the failed field goal attempt by Chicago Bears kicker Cody Parkey that allowed the Eagles to continue into the playoffs. Soon after, the season ended for the Eagles after losing to the New Orleans Saints on January 13, 2019 but the “Double Doink” lives on.  About the DOUBLE DOINK Trademark Application An application was filed to register DOUBLE DOINK as a trademark on January 8, 2019, just two days after the infamous playoff game.  Myron Thews of Wisconsin applied to register DOUBLE DOINK with the United States Patent and Trademark Office (USPTO) for use in “online, and clothing, novelty items".  Prior to the filing date of the application, the phrase DOUBLE DOINK dominated social media and made its [...]

By |February 4th, 2019|

PSU Trademark Interview

Attorney Riddle Interviewed by CBS 10 WTAJ About PSU’s Trademark Application for HAPPY VALLEY Attorney Riddle, Owner of EsquireTrademarks.com, was recently interviewed by WTAJ’s Evan Hinkley, on whether or not Penn State University will be able to trademark “Happy Valley” on shirts and hats. Penn State University is applying for a principal trademark, but will most likely be granted the “lesser” supplemental register. Attorney Riddle says, “Supplemental or not, they're gonna say: Just because the government says we're supplemental doesn't mean anything.... we still own trademark rights.” Attorney Riddle goes into more detail about this topic in his article Three Reasons Why Penn State Can’t Trademark Happy Valley. Attorney Riddle also mentions the limitations of trademarks on the supplemental register. He says, "The number one thing is that it requires more effort to prove in court that you own rights.... [...]

By |January 7th, 2019|

Three Reasons Why Penn State Can’t Trademark Happy Valley

Penn State's HAPPY VALLEY Trademark Should Be Denied The Pennsylvania State University filed Trademark Application 88216706 on December 4, 2018, to register HAPPY VALLEY for use on headwear, shirts, and sweatshirts.  The United States Patent and Trademark Office (USPTO) has accepted the application, but it still needs to be examined by an attorney.   Although Penn State will likely get the trademark registration for HAPPY VALLEY, I believe it will be rejected for being geographically descriptive. Penn State will overcome the rejection by amending the mark to the Supplemental Trademark Register, which carries with it very little weight in court proceedings. Below are the top 3 reasons why Penn State can’t (...shouldn’t be able to...) trademark the HAPPY VALLEY name. “Happy Valley” is a nickname for the State College borough and the townships of College, Harris, Patton, and Ferguson, in Centre [...]

By |January 4th, 2019|

What is Intent to Use (ITU) Trademark Application?

What is Intent to Use (ITU) Trademark Application? The Intent to Use (ITU) Trademark Application is an application that can be filed to reserve rights in a trademark prior to its actual use in commerce.  You should consider filing an ITU Trademark application if you have already found the perfect name for your business or product, and you’re eager to mark your territory before the official launch. Main Points: An Intent to Use Trademark Application is filed to Reserve Rights to a Trademark, and it is filed Before the Trademark is Used on the intended Goods or Services A Statement of Use is Required in order complete the application process and obtain the trademark registration.  A Statement of Use is a submission of verified proof that you are using the trademark on the goods or services listed in the trademark application.  A [...]

By |January 2nd, 2019|