Are you getting all the benefits that you can from your IP?
âIntellectual property fuels the creation of knowledge-
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!
âHelping small businesses and independent inventors with limited resources is an important goal of the USPTO, and supports the Obama administrationâs 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-
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-
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.
MAKE YOUR BUSINESS MORE TRADEMARK INTENSIVE: PLAN FOR A SUCCESSFUL, STRONG TRADEMARK PORTFOLIO
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-
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 PatentsÂ® can assist you in answering questions like these to plan and strategize for an intensive, strong portfolio:
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-
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