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A Notice of Allowance is a document from the USPTO informing you that you can file a Statement of Use and/or Extension of Time within 6 months from the date of issuance. The USPTO will send the Notice of Allowance to you or your attorney via email. As illustrated below, the Notice of Allowance is near the trademark pendency process finish line.

A trademark Notice of Allowance is your opportunity to file a Statement of Use and/or Extension of Time within 6 months from the date of its issuance.

Some applicants see this document and give up due to a
Continue Reading What is a Notice of Allowance (Trademark)?

In 2024, the trademark process timeline to registration can take between twelve to eighteen months at the United States Patent and Trademark Office (“USPTO”). The average time can be found at the USPTO processing time site–as of writing it is 14.7 months. That is why it is crucial to have an experienced trademark attorney file a trademark for you.

Even with the long wait times, the good news is that after registration, trademark protection is retroactive to the filing date. As a result, if you start early, your protection will reach back in time to the date you
Continue Reading How Long Does It Take to Get a Trademark in 2024

The New TESS Search website looks a bit different!

On November 30, 2023, the United States Patent and Trademark Office (“USPTO”) officially retires their clunky, 90s-era Trademark Electronic Search System (the “Old TESS”). They just rolled out a new TESS cloud-based system at noon.

Same search results, just done differently.

I call it “New TESS” and show you how to use “Advanced Searches” in plain English.

Sadly, the new system uses new search fields that are different than the Old TESS system. Gone are the old brackets we used; and boy is it a bit cumbersome to understand.

Let’s
Continue Reading Easy Guide — How to Use New TESS to do “Advanced Searches” in “Expert” Mode

Warhol’s use of Prince’s photo (taken by Lynn Goldsmith) was not entitled to fair use. In a David versus Goliath battle, the Supreme Court issued a landmark ruling against Andy Warhol’s Foundation last week.

SCOTUS: No “Fair Use” Defense in Warhol Use of Prince Photograph
SCOTUS found that Andy Warhol’s commercial use of Goldsmith’s photograph of Prince did not entitle the Foundation to a fair use defense to copyright infringement. The Court found that Goldsmith’s earlier photo and Andy Warhol’s use served the same commercial purpose – as a magazine illustration. Goldsmith’s photo can be found here, as well
Continue Reading No Fair Use for Warhol Prince Photo

Starting on December 3, 2022, the new deadline for trademark Office Actions is three months. Recently, the United States Patent and Trademark Office (“USPTO”) amended its Rules of Practice under the Trademark Modernization Act (“TMA”) of 2020. The new rules shorten the old, six-month deadline to three months.

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Starting on December 3, 2022, the new deadline for trademark Office Actions is three months.

As
Continue Reading New Deadline for Trademark Office Actions

Arbitrary trademarks are common dictionary words that are unrelated to the goods or services sold under the trademark.

Think of “APPLE” for computers or “SHELL” for gasoline.

Both terms have common dictionary meanings, but that meaning is unrelated to the goods or services provided. An arbitrary trademark is one of five other United States Patent and Trademark Office (“USPTO”) trademark types.

Other types include:

  • Fanciful (or “Coined”)
  • Suggestive
  • Merely Descriptive
  • Generic

Examples of Arbitrary Trademarks

Below, I listed several trademarks that are arbitrary:

APPLE® is an example of an arbitrary trademark because it is a common word unrelated to
Continue Reading Arbitrary Trademark: What You Should Know (Video)

A fanciful trademark is the strongest trademark type and, in addition to providing examples below, we define it as one that is “coined” for the purpose of serving as a trademark. Of the four types of trademarks, fanciful trademarks receive the most protection from trademark infringement since:

  • they did not previously exist in connection with the sale of a good or service; and,
  • carry no prior meaning.
  • EXXON is an example of a fanciful trademark because it was created solely to function as a trademark and has no meaning.
    Generally, there are four times of trademarks:

    • Fanciful or Arbitrary
    • Suggestive


    Continue Reading Fanciful Trademark: A Comprehensive Explanation

    There are 45 total Trademark Classes, also known as “International Classes” or simply “Classes.” The United States Patent and Trademark Office (“USPTO”) categorizes trademarks by “Classes.” The classification system is critical because trademarks identify a source of goods and/or services that distinguish the trademark from others.

    A video of me explaining the trademark classes.Each trademark must fall into one or more International Class of goods and/or services. In fact, applicants may use the International Class system to see what other marks exist in similar Classes. By checking the Trademark Classes, a trademark owner can reduce the odds of a Likelihood
    Continue Reading Trademark Classes – Complete 45 International Classes List (Video Update)

    A minor can register a trademark only if the minor’s “domicile” state allows the minor, in the minor’s individual capacity, to (1) enter into legal agreements, or to (2) sue another or to face a suit. TMEP § 803.01. Here, the “domicile” state is the state that one intends to make their “principal home.” See 37 C.F.R § 2.2(o); see also TMEP § 803.05(a).
    For example, if the minor may contract, then the minor can file trademark applications with the United States Patent and Trademark Office (“USPTO”) as the “Applicant.”

    A minor can register a trademark only
    Continue Reading Can a Minor Register a Trademark?

    Yes, you can trademark a hashtag (#) symbol for name, brand, logo, or slogan “only if it functions as an identifier of the source of the applicant’s goods or services.” TMEP § 1202.18. The United States Patent and Trademark Office (“USPTO”) explains that a hashtag is registrable only if it functions as a source identifier. It also says that a hashtag trademark cannot exist not merely as a way to foster discussion or searches on social media.

    In plain English, that simply means that a hashtag must indicate the source of goods and/or services sold under it.
    Continue Reading Can You Trademark a Hashtag?

    Trademark Class 41 involves entertainment and education services.

    As an overview, the United States Patent and Trademark Office (“USPTO”) divides all goods and services into 45 distinct categories (also called “International Classes”). Trademark Classes 1 to 34 deal with goods, whereas Classes 35 to 45 involve services. This gives applicants a greater degree of predictability when applying for a trademark since they can search for conflicting names in the same or similar Trademark Class.

    If you want to trademark a brand for education, blogging, sports, or entertainment services, select Trademark Class 41.

    Trademark Class 41 is a popular class encompassing
    Continue Reading Trademark Class 41: Education and Entertainment Services

    Yesterday, the United States Patent and Trademark Office (“USPTO”) sanctioned Trademark Terminal’s owners. Per the order, the USPTO plans to terminate all the trademark applications they filed.

    In email, the USPTO stated that from abroad, Trademark Terminal “fraud[ulently] filed . . . over 5,500 trademark applications.” As such, the USPTO imposed sanctions against Abtach Ltd., 360 Digital Marketing LLC, and Retrocube LLC, (the “Sanctioned Companies”). According to the USPTO, these “Sanctioned Companies” operate Trademark Terminal from outside of the United States.

    The USPTO sanctioned Trademark Terminal, so if you filed a trademark with Trademark Terminal, the USPTO
    Continue Reading Trademark Terminal Sanctioned, USPTO Cancels Applications

    A trademark Statement of Use (“SOU”) is a sworn statement that provides United States Patent and Trademark Office (“USPTO”) proof of use in commerce via (1) a specimen and (2) a $100 fee/Class. If you filed a Section 1(b) Intent to Use application, you will need to file a Statement of Use before the USPTO allows you to register.

    Below, I explain:

  • what a Statement of Use is,
  • when to file it,
  • what documents you must provide, and
  • the trademark Statement of Use fee.
  • If you filed a Section 1(b) Intent to Use application, you will need to provide
    Continue Reading Trademark Statement of Use: What Is It?

    The three distinct trademark symbols are the registered trademark symbol “R” (®), the small “TM” () symbol, and the “SM” (℠) symbol.

    Overview: Which Trademark Symbol Should I Use?

    Here, the circled “R” (®), “TM” (), and “SM” (℠) symbols tell the world what IP rights you claim.

    You may use the circled “R” (®) only after successfully trademark registration. In fact, you do not need to use it, but it is wise idea. Put the ® to the upper right of your trademark. This provides notice to the public that you claim trademark registration in that
    Continue Reading Trademark Symbols ®, ™, ℠ – An Overview (Updated)

    In 2022, the cost to file and trademark a name at the United States Patent and Trademark Office (“USPTO”) is $250 per International Class of goods and/or services. However, if a custom description is necessary, the cost to trademark a name is $350 per Class.

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    Continue Reading How Much is the Cost to Trademark? (2022 Update)

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    Continue Reading International Trademark Classes Guide: All 45 Classes