Trademark Classification is similar to the departments in a store. Stores categorize merchandise into departments to help you find the products you are looking for, like women’s clothing, household appliances, or bed linen. Similarly, trademark classification is a way to categorize goods and services to help you search for goods and services that are similar…
If you filed a federal trademark application with the USPTO, the examining attorney might issue a letter called an Office Action setting forth reasons why registration is refused. If likelihood of confusion is the reason, then the Office Action will contain a refusal under Section 2(d) which states: “No trademark by which the goods of…
The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, the Madrid Protocol, is one of two treaties comprising the Madrid System for international registration of trademarks. The protocol is a filing treaty and not a substantive harmonization treaty. It provides a cost-effective and efficient way for trademark holders — individuals and…
The requirements for establishing a basis for registration of a trademark or service mark under §44(e), relying on a registration granted by the applicant’s country of origin, are: The applicant must submit a true copy, a photocopy, a certification, or a certified copy of the registration in the applicant’s country of origin, and, if the…
Claiming foreign priority under Section 44(d) applies if an eligible applicant files the U.S. application claiming §44(d) priority within six months of filing the first application to register the mark, the filing date of the first-filed foreign application is the effective filing date of the U.S. application. The priority filing date also constitutes a constructive…
Use in commerce means using your trademark in selling or transporting your goods out of state or in providing services to customers who live outside your state. For example, you might grow wheat in Kansas and sell it to buyers in Massachusetts or Mexico. Or you might provide website design services from your home in…
Filing a federal trademark application may vary depending on “basis” to five types including: Actual Use under Section 1(a); Intent to Use under Section 1(b); claiming foreign priority under Section 44(d); claiming foreign registration under Section 44(e); and Madrid Protocol extension under Section 66(a). Actual Use Basis under Section 1(a) requires proof of use of…
Intent to use means that you haven’t started using your trademark in commerce, but you have a bona fide intent to do so within the next three to four years. For example, you might intend to make and sell wallets, but you’re just at the point of sourcing your materials. That is, you haven’t started…