This article is the first in a series entitled The American Trademark Puzzle, which examines how and why the U.S. trademark system operates differently from most other jurisdictions – often in a manner that brings added complexities, nuances and frustrations, but also gives rise to strategic opportunities.  A more comprehensive understanding of the American trademark system may assist trademark filers, attorneys, or anyone with an interest in trademark law, alike, in navigating the complex reality of U.S. trademark law. This first installment will provide a historical perspective of the system to supply you with the corner pieces of the American Trademark Puzzle. 

This Litmus Latest is specifically for our clients that are outside the U.S. and more particularly, those clients who seek registration of marks in the U.S. based on the “defensive” filing strategy used in many jurisdictions around the world.  The goal is simple: Explain an important U.S. rule that is one of the many ways U.S. trademark law differs from the laws of other jurisdictions.

We would like to make sure our clients are all aware of an underutilized tool that can be used immediately upon discovery of a potentially problematic application being filed at the USPTO: the Letter of a Protest. A Letter of Protest enables you to inform the USPTO of potential problems with the target application (i.e., likelihood of confusion, mere descriptiveness, false claims of use, etc.) so that the Examiner may be more likely to issue a refusal. In contrast to an opposition, a Letter of Protest can be filed before publication, meaning that you do not have to wait to take action against the application at issue. Moreover, because the Examining Attorney bears the responsibility to assert (well-documented) bases for refusals, a Letter of Protest is much more cost effective than other enforcement methods (such as sending cease and desist letters, oppositions, filing federal lawsuits, etc.).

If you would like to learn more, visit the Client Section or Contact Us for a copy of our Litmus Law Memo.

Helene recently attended an interesting presentation on the topics of application pendency and fraudulent applications put on by the USPTO.

Applicants are often quick to want an International Registration, which can offer significant costs savings and efficiency. Also, filing an IR designating the U.S. will mean no USPTO deficiency surcharges.  However, there are a number of drawbacks and considerations when deciding whether the IR is the best choice for a particular mark.  Even skilled practitioners can become ensnarled with various aspects of the system.  It’s always best to do a careful analysis before proceeding with an IR.  Want some tips and recommendations? Request our Memo about this topic and/or to be included on our invite list for an upcoming webinar about this topic.