Category: Trademarks

Posted on

How Madrid ten-year trademark renewals work

US trademark practitioners are just now starting to get asked by foreign clients to do a kimadrid-ren-4nd of filing that never existed before about September of 2014.  The filing is a ten-year Statement of Use for a US Madrid registration.  This blog article tries to explain such filings and how they are similar to and different from other US trademark maintenance and renewal filings.  If you already understand everything about the figure at right, you can skip reading this blog article!

Continue reading “How Madrid ten-year trademark renewals work”

Posted on

“Walk through time” at the USPTO

There’s a curious temporary display in the atrium at the USPTO.  Called “Walk through time”, it is a windingparis path with large printed labels on the floor, portraying various events in the history of the USPTO.  It starts with the founding of the patent office and proceeds through some sixty or so events to the present.  pct

My personal favorites are the 1887 event (the US joins the Paris Convention) and the 1970 event (the US joins the Patent Cooperation Treaty).

 

Posted on

An excellent blog that you should subscribe to

(See a followup article.)

Law Professor Rebecca Tushnet (Georgetown Law School) has a fascinating blog called Rebecca Tushnet’s 43(B)log with a tagline of “False advertising and more”.  If you haven’t subscribed to her blog, you should.  One of her blog posts today is No dog in this fight: PTO makes a cancelled mark incontestable.  The story told by this posting is by turns amusing, puzzling, and astonishing as one reads about the manner in which the USPTO handled the underlying trademark application and registration.

Posted on

Clever associate’s trademark advocacy secret weapon revealed

It’s a few months ago that I looked at one of our trademark cases — a Madrid Protocol case that had come in from foreign counsel on behalf of a foreign applicant — and pronounced to anyone who would listen that the case was never going to be approved for publication.  I was convinced that the Examining Attorney’s grounds for refusal were impossible to overcome.   I figured it was only a matter of time before it would go abandoned.  I figured the sole remaining necessary lawyering skill would be communicating a gentle let-down to foreign counsel — an exercise in expectations management.

One of my associates was handling the case.  The other day I was astonished to learn that my associate had completely overcome the refusal.  I asked her how she accomplished this seemingly impossible result.  She smiled and explained what had happened.

Continue reading “Clever associate’s trademark advocacy secret weapon revealed”