Author Archives: Eric Misterovich

A Uniform Domain Name Dispute Resolution Policy (UDRP) or domain dispute proceeding is an administrative proceeding regarding the use of domain names. How Does One File a UDRP Complaint? UDRP proceedings start when someone files a complaint in with either the National Arbitration Forum (NAF) or the World Intellectual Property Organization (WIPO). The filing fees […]

It is a contract between two parties that governs the parties’ use of certain trademarks. These agreements are often referred to by a number of names, and are sometimes called co-existence or consent agreements. The primary purpose for entering a concurrent use agreement is to permit a mark to achieve registration. For example, lets assume […]

Inter parte proceedings before the Trademark Trial and Appeal Board largely consist of trademark opposition and cancellation proceedings. These proceedings are similar to federal civil lawsuits, but the procedure is different. For an explanation of the process, continue reading. What Happens After a Notice of Opposition or Petition to Cancel is Filed? After the Notice […]

Trademark opposition and cancellation proceedings are administrative proceedings that are similar to a lawsuit in federal court. The first question in any opposition or cancellation proceeding is whether the opposer or petitioner has standing. We reviewed the standards for standing here. Now we will address the substantive merits of trademark opposition and cancellation proceedings. Grounds […]

A trademark opposition proceeding is an administrative proceeding, similar to a civil federal lawsuit, before the Trademark Trial and Appeal Board (TTAB) in which one party seeks to prevent another from registering a trademark. To understand trademark opposition proceedings, you must first understand the trademark process as whole. You can read our summary of the […]

The Trademark Trial and Appeal Board (TTAB) is an administrative body within the United States Patent and Trademark Office (USPTO) that is responsible for hearing and deciding certain kinds of trademark issues. Specifically, the TTAB hears appeals from the USPTO examining attorney decisions that trademarks should not be registered. Further, the TTAB hears inter partes […]

Many family businesses carry the family name. The family name comes to serve as a symbol of trust and recognition. But can you obtain federal trademark registration of your family name? Many businesses that apply for trademark registration will receive an Office Action refusing to register a mark because it is “merely a surname” under […]

The majority of Office Actions issued refuse to register marks under Section 2(d) of the Lanham Act based on a likelihood of confusion with a registered mark. Here, the examining attorney may refuse to register a mark it determines so resembles a registered mark that is likely to cause confusion, mistake, or to deceive. The […]

The Lanham Act, the federal law governing trademarks, specifically prohibits the registration of trademarks that fall into a number of categories. For example, Section 2(e) lists the following types of marks that are precluded from registration: Marks that are merely descriptive of the goods or services offered under the marks; Marks that are primarily geographically […]

Trademark registration is a valuable asset and when companies invest in securing federal trademark registration, they want to obtain a full registration of the exact mark submitted. But many times businesses attempting to register a trademark and are meet with an Office Action requiring that certain components of the mark be disclaimed. In most cases […]