Patents & Trademarks Questions for file

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sufficient standing to file a petition for cancellation?

sufficient standing to file a petition for cancellation?

In Trademark Registration    -  updated on 11/11/2009
I have a relatively specific question: What the restrictions are on showing sufficient standing in order to file a petition for cancellation of an existing registered trademark?

Is it enough to say something like, "I would like to use the mark in the future without the risk of getting sued", and that's it? Or is it necessary to show proof of actual damages, or documentation of actual ability and intent to use the mark (such as being a business entity with existing pr...
Best Way to File for a Servicemark?

Best Way to File for a Servicemark?

In Service Marks    -  updated on 11/11/2009
I just joined a small investment firm and discovered that they have never filed for a trademark on their name (they've been in business over 15 years).

I want to handle this myself rather than hire an attorney (I'm a lawyer but this is not my specialty by any means), but I've got some questions that I'd like to get some feedback on.

Let's say the name of the firm is "Acme," and Acme is a real name (not a made up one like Accenture or so...
Common Law application v First Filed Application

Common Law application v First Filed Application

In Trademark Ownership    -  updated on 11/11/2009
I filed a new trademark application based on use; however there are several marks that confusingly similar to mine filed before me in the USPTO.

I have a senior use rights, but the other marks will be published for opposition very soon.

I guess USPTO only check the marks that are previously filed or registered, because my mark was not opposed to them.

Anyway, I understand that I have to file the opposition against those marks, but if I will not, do you think ...
Refile Declarations 8/15

Refile Declarations 8/15

In Trademark Registration    -  updated on 11/11/2009
Group:

Filed an assignment document, then filed Decs 8/15.   Was told by the USPTO that they update the information after receiving the assignment.  I was told TODAY that this is not the case. 

In any event, I looked back at the filing and apparently, they used the NAME of the assignor and the ADDRESS of the assignee.  We didnt catch it and filed.  So, the decs are invalid and have to file again, and pay 300.00.  Is there any petitioni...
Failure to File your Affidavit of Use at year 5-6

Failure to File your Affidavit of Use at year 5-6

In Trademark Registration    -  updated on 11/11/2009
Hello,

Another Q regarding TM practice:

If you fail to file your affidavit of use during the 5-6 year period after registration,  And you fail to file during the 6 months grace period,

Can you do anything to prevent cancellation of your mark?

Is there a petition to prevent/undue cancellation of a registered mark due to this lapse?

I've looked at TMEP 1703
TMEP 1714
1604 and all over 1600 and can't seem to find anything about petition to revive REG...
First Use vs. First to File

First Use vs. First to File

In Trademark Disputes    -  updated on 11/11/2009
My company has applied for a trademark and subsequently, another company within the same International Class has filed for a similar trademark application.

Our application has been Published for Opposition and the subsequent filer's application has been suspended due to the status of our application.  The subsequent filer has contacted us to possibly obtain a consent for their application to be finalized.  They have stated in their application that they first used the tradema...
ANYONE ever filed/recieved a tradedress from USPTO

ANYONE ever filed/recieved a tradedress from USPTO

In Trademark Office Action Responses    -  updated on 11/11/2009
Hi, I'm having a lawyer from the board do a a tradedress, and wanted to see if anyother members here have filed, or if they did file recieve their tradedress, and how did the application process go?

thanks
how to file the mark- standard or stylized?

how to file the mark- standard or stylized?

In Trademark Registration    -  updated on 11/11/2009
Does it matter if you submit a standard character drawing vs. a stylized?

If a competing company has a similar name but with a different font color would that matter at all?

i want to make sure- otherwise it sounds like the standard character is the best way since it preserves the generic form?
Foreign Filed application treated as US priority

Foreign Filed application treated as US priority

In Trademark Registration    -  updated on 11/11/2009
Hello,

If one filed a foreign application and then used that filing date in the US, would they be granted and treated as though file din US on that date (for purposes of damages, opposition, litigation).

Thanks,

Matt
can applicants outside U.S. file online

can applicants outside U.S. file online

In International Trademarks    -  updated on 11/11/2009
Can an applicant outside U.S. who does not have a real business office or location in the U.S. proceed to filing his trademark applications online without an interference of a local attorney? I am just wondering if the applications go to finial registration, will the USPTO send directly the certification of registration to the applicant that locates in a foreign country. Thanks anyone who replies.
Abandoned Trademark app: when to refile?

Abandoned Trademark app: when to refile?

In Expired Trademarks    -  updated on 11/11/2009
I have an abandoned US trademark app (ITU).  Abandoned for about two years.  Can I refile (now that I have better arguments) at any time for the same mark or do I need to wait till I have actual use?
Why File for Incontestability?

Why File for Incontestability?

In Trademark Registration    -  updated on 11/11/2009
What extra rights does incontestability under Section 15 give to a registrant?  Does it really make a difference?
Which class(es) to file for?

Which class(es) to file for?

In Trademark Registration    -  updated on 11/11/2009
I intand to publish and circulate on a subscription basis, a web-based  ezine. At a later date, I may choose to have a print publication.

class 9 - ezines
class 16 - print magazines
class 41 - publishing ezines and magazines

In my case, wouldn't class 41 cover it?

fail to file a trademark application 7 years ago

fail to file a trademark application 7 years ago

In Trademark Disputes    -  updated on 11/11/2009
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I have used a trademark on my goods for 8 years. Yet, a company recently use the trademark anf file an application in the PTO.

I'd like to hear your comments and thoughts on the followinf questions:

1. can I file my mark and register it now? If so, do I have an exclusive right against them after the mark is registered?

2. can I stop their usage prior to my registeration? Or I only can stop them until got my registeration. Need to compensate for their loss owing to ...
marks, with no graphic, can they be filed in diff styles?

marks, with no graphic, can they be filed in diff styles?

In Branding    -  updated on 2/10/2010
Also some word marks, with no graphic, seem to register in a generic font. Does that mean once the name is registered that any font or typestyle can then be used on their goods?
I have a trademark filed - but not granted yet.

I have a trademark filed - but not granted yet.

In Branding    -  updated on 5/3/2010
U.S. TRADEMARK APPLICATION NO. 77572798 - BONSAI SHEROES – I have this trademark pending – I am selling my merchandise with my logo Bonsai Sheroes on backpacks, sticker, tee shirts, music etc online and in retail stores. I want to trademark the name Bonsai Sheroes. The attorney at the office trademark told me that: Specimen – Failure to Function - Ornamental Registration was refused because the applied-for mark, as used on the initial specimen of record, was merely a decorative or or...
DOES AN OWNER OF A TRADEMARK NEED TO ALSO FILE FOR A COPYRIGHT?

DOES AN OWNER OF A TRADEMARK NEED TO ALSO FILE FOR A COPYRIGHT?

In Copyright vs. Trademark    -  updated on 6/6/2010
I HAVE A FRIEND WHO IS INCARCERATED. SHE CLAIMS TO HAVE THE TRADEMARK FOR A LINE OF WMEN'S CLOTHING AND SHE THINKS SHE NEEDS A COPYRIGHT. DOES SHE NEED ANYTHING?
The term ABANDONED - NO STATEMENT OF USE FILED

The term ABANDONED - NO STATEMENT OF USE FILED

In Can I Trademark it?    -  updated on 6/26/2010
Dear Mrs, Sirs, You have the term: ABANDONED - NO STATEMENT OF USE FILED What does that mean? That the federal status is not valid anymore? It is free to register? Please advise. Kind regards, Daniel Franken, n.franken@skynet.be
How to file Statement of Use on approved trademark

How to file Statement of Use on approved trademark

In Trademark Registration    -  updated on 7/14/2010
We received Trademark approval and we are now using the Trademark in our business (a web site). Do I need to follow-up with a Statement of Use declaration? Do I do this through Trademarkia or directly with USPO? Thanks.
Find a reputable Patent Attorney to file your patent?

Find a reputable Patent Attorney to file your patent?

In Branding    -  updated on 10/29/2010
How do you find an honest attorney to file a "patent" for you and not tack on added fees etc.? The patent office gives you a list but it has hundreds of patent lawers. I live in Baltimore MD. 21221