Category: Trademarks

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What kinds of USPTO communications are secure and not secure?

When I was first in practice, a long time ago, the only ways to communicate with a patent examiner at the USPTO were:

    • postal mail (and couriers)
    • telephone calls
    • fax
    • hand-carry.

The USPTO’s policy, to the extent that such a thing had been thought about at all, was that all of these kinds of communication were sufficiently secure as to satisfy national security requirements.  You might file a patent application the contents of which were so sensitive that a foreign filing licence would not be granted, and it was okay that the way you sent it to the USPTO was by postal service.

But what kinds of communication are actually secure? As I discuss below, the USPTO has this kind of thing absolutely backwards. What USPTO thinks is secure is not secure, and vice versa. Continue reading “What kinds of USPTO communications are secure and not secure?”

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Using a trademark as a noun

screen shot from Trezor Safe 7As any experienced trademark practitioner will tell you, it is a big mistake to use a trademark as a noun.  Using a trademark as a noun (e.g., “Pass me a Kleenex”) instead of an adjective (e.g., “Pass me a Kleenex tissue”) risks transforming a brand name into a generic term, potentially leading to a loss of legal protection.   I have contacted Trezor Company s.r.o. (the maker of the cryptocurrency wallet shown at right) to suggest that they stop making this mistake.  Let’s see if, some time soon, they update their firmware and apps and web site accordingly.  Continue reading “Using a trademark as a noun”

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It’s time to get in your numbers for the 2025 toteboards

Hello readers.  It is now 2026 and this means it is time to get in your numbers for the 2025 toteboards:

The goal is to recognize and rank law firms in the US based upon the numbers of US design patents, US utility patents, US plant patents, and US trademark registrations each firm obtained for clients in 2025.

The questionnaires will close on Friday, February 13, 2026.

Here is a page suggesting how you might obtain these numbers.

Every year after I post the results of the toteboards, I get sad emails from firms that want me to accept their numbers late.  This would, of course, typically result in kicking other firms down in the rankings — other firms that got their numbers in on time.  Please help to reduce the number of such sad emails that I will receive this year.  Maybe you are a person at your firm who is responsible for getting these numbers in.  If so, please get your numbers in!  Otherwise, please forward this blog posting to somebody at your firm to make sure that somebody at your firm gets the numbers in for your firm.

You can see the previous toteboards here, going back to the earliest toteboard in 2012.

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Over 3000 trademark registrations likely soon to be stricken from the Register

The USPTO has issued a show-cause order dated January 27, 2026 which you can see here.  The order has an Exhibit A listing 3361 trademark applications.  The order sets a thirty-day period (ending on February 26, 2026) in which an applicant in any one of the applications will be permitted to attempt to show cause why the application ought not to be brought to an end.  (Most of the listed applications have a status of “registered”, in which case the action taken by the USPTO will be to strike the registration from the Register.)

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Should the listserv member click on the link? Is it spearphishing?

Oppedahl Patent Law Firm LLC (“OPLF”) sponsors many listservs (email discussion groups for intellectual property professionals, here is a list of them), some with over a thousand members.   In recent days, hundreds of members of the listservs have started to receive email messages that prompted questions, such as:

I received an email, and I need to know whether it is a phishing hack.  If it’s legitimate, I will respond accordingly.

Another listserv member responded:

Got same thing yesterday.  Is real.  The question is why.

What do these emails mean?  Why are the listserv members receiving the emails?  How should listserv members respond?  In this blog posting, I try to answer these questions.  Continue reading “Should the listserv member click on the link? Is it spearphishing?”

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Listservs seem to be back in service

Hello listserv colleagues!  I think the listservs are more or less back in service.  But for about 30% of our listserv members, the member’s email service provider (ESP) is blocking our postings as spam.  If you are in that 30%, I urge you to direct your ESP to stop the blocking.  This may include whitelisting the new IP address or speaking frankly with your ESP.

And if you posted anything to any of the listservs since about December 21, I am sorry to say you will probably need to repost it.

It took a lot of my professional time to deal with this.  And the hosting service will cost a bit more in perpetuity.  I will gladly receive donations to help support this, as detailed below.

Details follow.  Continue reading “Listservs seem to be back in service”

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Learning to guess outcomes of appeals of 2d refusals

the TTABlog - keeping tabs on the TTABThanks to John L. Welch’s hundreds of blog articles about 2d refusals, I have gotten to the point where sometimes I can guess correctly the outcome of an ex parte appeal of a 2d refusal.  The alert reader might ask:

    • What is a “2d refusal”?
    • Why would it be interesting to try to guess “the outcome of an ex parte appeal of a 2d refusal”?
    • How might it be that hundreds of blog articles by John L. Welch might lead to a situation in which sometimes I can guess the outcome of such an appeal?
    • And, what can be said of John L. Welch’s extraordinary contributions to the trademark community through his blog?  Continue reading “Learning to guess outcomes of appeals of 2d refusals”
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Why all trademark practitioners need to know about BIMI

BIMI logoDo you or your trademark client ever find that your outbound email to somebody ends up in their spam folder?  Do you or your trademark client ever find that your outbound email to a recipient gets wrongly bounced as “suspected spam” or gets silently discarded by the recipient’s email service provider?

There’s a chance that BIMI, which draws upon a registered trademark of the sender of an email message, might help a little with these problems.  What is BIMI?  What must an email sender do to get BIMI to work?

Continue reading “Why all trademark practitioners need to know about BIMI”