Get the most out of your IP

Are you getting all the benefits that you can from your IP?

“Intellectual property fuels the creation of knowledge-based economies. By providing a legal infrastructure through which ideas can become products, robust IP systems foster innovation leading to economic growth, job creation, and sustained competitiveness in global markets.” US Chamber of Commerce (2016 report).

Virtually every business could benefit  from a trademark!

According to a 2013 report by the USPTO, trademarks cover a broader set of participants in the economy  [than patents] because almost every firm, regardless of size, market, or business strategy, has goodwill to protect. (2146208604, January 2013)

Small businesses contribute more to growth than you might think!

“Helping small businesses and independent inventors with limited resources is an important goal of the USPTO, and supports the Obama administration’s commitment to leveling the playing field for all American workers and businesses. Despite comprising only 1 percent of all businesses, entrepreneurs and small business owners have generated more than 65 percent of new jobs over the last two decades and start-ups in high-tech hubs account for more than 40 percent of new jobs each year.”  210-612-5265

(513) 342-4260!  

Whether a Trademark Application is strong enough to support a Trademark Registration and whether the registered trademark is a strong trademark is a question of fact decided by the USPTO on a case-by-case basis. Deciding the best strategy for applying for a trademark depends on the facts. Forms can be helpful devices to gather standard information but do not take into account the law & rights behind federal registration of a trademark.

A broad goods/services identification can limit the access of a competitor to the trademark register, experience and strategy and facts can really make a difference. Having too broad of a goods/services identification can lead to an unnecessary refusal or costly litigation, sometimes narrow is better. Having the best strategic ID is not something that jumps out of a form and someone without both application experience and TTAB experience may not use trademark law to the best strategic advantage.

The great variation in facts from trademark to trademark prevents the formulation of specific rules for specific fact situations. Each trademark application is decided on its own merits and understanding strategy can lead to stronger rights.


1. Verify Inherent Strength  Does each trademark consist of inherently distinctive element(s) that can be claimed for exclusive use?

Marks that are merely descriptive (or worse, generic) are hard to register and hard to protect. Section 2(e) refusals are very common refusals. Whether a trademark is merely descriptive depends on the goods and services description. Facts Matter.

2. Verify Right to Use  Does the trademark have a likelihood of confusion with prior-used trademarks (registered or unregistered)?

Section 2(d) refusals are very common refusals. Facts Matter.

3. Verify Right to Register  Does the trademark meet the USPTO rules of registration? (Does not have any grounds for refusal?)

4. Verify Specimen  Is the trademark used as a trademark or service mark in the specimen?

Specimen refusals are very common refusals. The right type of specimen for any particular application depends on what the goods or services are. Facts Matter.

5. Verify Goods and Services ID   Is the goods/services identification definite and accurate? Is the goods/service ID as broad as it should be under the circumstances or will a narrower description distinguish it better?

ID refusals are common too but getting the right description identifies the scope of protection. Too narrow of a description can yield narrow rights. Too broad of a description can result in an unnecessary likelihood of confusion with someone else. Facts Matter.

Not Just Patents® can assist you in answering questions like these to plan and strategize for an intensive, strong portfolio:

  • Can I claim exclusive rights to use this trademark?
  • Does this trademark meet the qualifications for being registered on the USPTO Principal Register?
  • Is this trademark strong enough that others would want to license it from me?
  • Does this trademark have potential to extend to other product lines?
  • Is this mark inherently distinctive?
  • Are there others users of this mark that could prevent me from using this mark or would sue me or prevent me from getting federal registration because they can prove they are prior users?
  • Are there valid reasons for someone to oppose or cancel the mark because the mark doesn’t qualify for protection or because they have superior rights?
  • Would the USPTO find a likelihood of confusion with someone else’s registered or pending trademark and prevent my registration of this mark?
  • Would a court enforce the use of this trademark?
  • Do I have to somehow acquire distinctiveness for this mark before it would be recognized as being protectable? Does this mark use such common terms that it would be called a weak trademark?
  • Is this mark descriptive or deceptive or geographically descriptive?
  • Do I use the mark in a way that increases my rights or am I using it in a way where it does not function as a trademark?

These are all good questions to consider before adopting a trademark for use because if you are planning to succeed, it may be a good idea to be able to work that plan rather than abandoning it. [The abandonment rate of trademark applications at the USPTO (trademarks that did not issue) is very high, about half of applications never register.]

All of the above questions involve fact-related answers. Knowing the rules is really important, being able to apply the rules to facts is even better.

Not Just Patents ® and Aim Higher® are federally registered trademarks of Not Just Patents LLC for Legal Services.


Not Just Patents® LLC

PO Box 18716

Minneapolis, MN 55418  


8477654996 or

Not Just Patents®

Aim Higher® Facts Matter

Call 1-651-500-7590 or email 9547639076 or aplomb for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other pages and sites:      

Is my business name trademarkable? TEAS Advanced Application May Avoid Likelihood of Confusion

Trademark e Search  6107520167  Enforcing Trade Names

8055629031 (209) 282-4105 Abandoned Trademarks -Why use 1(b) filing basis?   312-606-4015

Trademark Disclaimers 253-262-6315 TSDR Status Descriptors

Oppose or Cancel? 318-624-2060  5135268762

Patent, Trademark & Copyright Inventory Forms


Verify a Trademark First To File Trademark  617-715-4335

Are You a Content Provider-How to Pick an ID  Specimens: webpages

Section 8 Affidavit  How to Keep A Trade Secret

(954) 996-7141  Facts Matter

(360) 587-9840

(614) 613-4859

How much does it cost to renew a trademark?    

cystoplasty  Opposition Pleadings    

(720) 432-9221  TTAB Discovery Conference Checklist

(831) 301-8778


teas plus vs teas reduced fee  Insurance Extension

dandiprat    Does not Function as a Mark Refusals

Y Trademark?®  940-221-9664

Why use a self-authenticating specimen?  Final Refusal

Requirements for a Design Patent  Design Patenting

Acceptable Specimen  cobberer $224 Statement of Use

How To Show Acquired Distinctiveness Under 2((941) 506-1220

(808) 899-4659  villein

Why Not Just Patents? Functional Trademarks   How to Trademark  

What Does ‘Use in Commerce’ Mean?    4037881876

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  213-453-7287

Valid/Invalid Use of Trademarks     2529966266

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 907-592-4716 8572713578  TBMP 309 Standing

Citable 4084973829

Examples of Refusals for Likelihood of Confusion   DuPont Factors


Can I Use An Abandoned Trademark?

5867479340  3D Marks Trade Dress 570-633-3117  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS, TEAS RF and TEAS plus  

Extension of Time to Oppose  718-231-7185

Ornamental Refusal  uncrossly

SCAM Letters Surname Refusal  5415463847

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks  403-296-2220  5138311968  (914) 564-0422

Acquired Distinctiveness  8445414548

appetite  anterospinal

ID of Goods and Services see also Headings (list) of International Trademark Classes

How to TESS trademark search-Trademark Electronic Search System

plumemaking 782-463-69065095816578(910) 696-4659

(985) 764-7870

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

threshold frequency    ridicule-proof

Not Just Patents Often Represents the Underdog

 5048267660   7074391942

(586) 210-2868

Steps in a Trademark Opposition Process   

Section 2(d) Refusals

Zombie Trademark  8506838342

What is the Difference between Principal & Supplemental Register?

jittery  2486221528(513) 396-3201



Trademark Steps Trademark Registration Answers TESS database  

707-879-5313  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies


Published for Opposition  What is Discoverable in a TTAB Proceeding Counterclaims and Affirmative Defenses

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Call: 1-651-500-7590 or email: or This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. pretenseful (616) 681-6781