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.

A decision of the Trademark Trial and Appeal Board confirmed what most practitioners know: use of a term ONLY as a trade name and not in a trademark manner is not sufficient for trademark registration.  See  In re Hi-Tech Pharmaceuticals, Inc., Serial No. 88291540 (2/14/24) (not precedential). Generally, a trademark must be seen as identifying certain goods or services.  Things that generally indicate trade name use is use of the term with an address or other contact information immediately below and/or preceded by phrases such as “Development and exclusively manufactured by XYZ Corporation.”  Trademark Use is generally when the term is used in a branding manner.
 
Ask for our Memo on Trademarks and Trade Names for more information.