The “Principal” of the Matter: Deciding Between Principal and Supplemental Register Registration

I’ll start this post by acknowledging the misleading title – rarely, if ever, does a federal trademark applicant independently decide to register its mark on the Supplemental Register in the United States.  Whereas registration on the Principal Register is the “gold standard” for federal trademark applicants, the Supplemental Register offers a “second best” kind of registration, which provides some, but not a full complement, of benefits.  Continue reading

Speaking the Language of the Trademark Office: Descriptions of Goods and Services

One of the most important steps when preparing a new trademark application is creating the list of the products or services that the trademark will identify.

Think about it:  This list defines the scope of your registered rights in a mark.  The U.S. Patent and Trademark Office (USPTO) will use this list to determine whether your mark is confusingly similar to those in prior applications and registrations, and competitors will use it to gauge whether they can get away with adopting a similar brand.  Plus, if your description of goods and services is inaccurate, your trademark registration can be exposed to cancellation.  High stakes!

Ever take a look at one of these descriptions and wonder what on earth it means?  “Providing temporary use of on-line non-downloadable software and applications for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}”?  That’s a lot to take in all at once – so let’s break it down.  Continue reading

Marco v. Polo: Navigating Around “Likelihood of Confusion” Refusals

There are refusals, and then there are refusals, and a “likelihood of confusion” refusal (also called a “Section 2(d)” refusal in the US) is certainly of the latter variety.  But most times you don’t need to be an expert navigator to traverse these choppy waters and successfully sail your application through to registration.  All it takes is a little bit of “pathfinding” (investigating) on your part, and “charting a course” (developing a strategic approach) for moving forward.

And then I ran out of explorer metaphors.

As consolation, here are some thoughts about how to approach and respond to these kinds of refusals, which are among the most daunting.  Some, but not all, of the tips below apply equally to “likelihood of confusion” refusals encountered in the USA and in trademark offices abroad.

Continue reading