Updates Regarding COVID-19 Impacts on Trademark Operations at the USPTO


Updated April 1, 2020

The Director of the United States Patent and Trademark Office issued a notice on March 31, 2020, that the due date for any of the following filings that falls between March 27, 2020 and April 30, 2020, may be extended for thirty (30) days, provided that the filing is subsequently made within such extended period and accompanied by a statement that the delay in filing (or payment) is “due to the COVID-19 outbreak.”

  • A response to an Office Action (including the filing of a Notice of Appeal)
  • A Statement of Use or a Request for an Extension of Time to File a Statement of Use
  • A Notice of Opposition or a Request for an Extension of Time to File an Opposition
  • A trademark application claiming the priority of a foreign application (whether filed directly with the USPTO or through the Madrid Protocol)
  • A request to convert a Madrid Protocol application to a national application
  • An Affidavit of Use or a renewal application (whether related to a registration obtained nationally or through the Madrid Protocol)

For the delay in filing to qualify for the extension, the delay must occur because the “practitioner, applicant, registrant or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.”

If you believe that you and your trademark matter qualify for an extension of time under the foregoing concession, please contact the trademark professionals of Faegre Drinker at your earliest convenience. In the interim,  we will continue to monitor this situation and post updates to this blog post.

Original Post, Dated March 24, 2020

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The “Principal” of the Matter: Deciding Between Principal and Supplemental Register Registration


I’ll start this post by acknowledging the misleading title – rarely, if ever, does a federal trademark applicant independently decide to register its mark on the Supplemental Register in the United States.  Whereas registration on the Principal Register is the “gold standard” for federal trademark applicants, the Supplemental Register offers a “second best” kind of registration, which provides some, but not a full complement, of benefits.  Continue reading

Speaking the Language of the Trademark Office: Descriptions of Goods and Services


One of the most important steps when preparing a new trademark application is creating the list of the products or services that the trademark will identify.

Think about it:  This list defines the scope of your registered rights in a mark.  The U.S. Patent and Trademark Office (USPTO) will use this list to determine whether your mark is confusingly similar to those in prior applications and registrations, and competitors will use it to gauge whether they can get away with adopting a similar brand.  Plus, if your description of goods and services is inaccurate, your trademark registration can be exposed to cancellation.  High stakes!

Ever take a look at one of these descriptions and wonder what on earth it means?  “Providing temporary use of on-line non-downloadable software and applications for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}”?  That’s a lot to take in all at once – so let’s break it down.  Continue reading

Marco v. Polo: Navigating Around “Likelihood of Confusion” Refusals


There are refusals, and then there are refusals, and a “likelihood of confusion” refusal (also called a “Section 2(d)” refusal in the US) is certainly of the latter variety.  But most times you don’t need to be an expert navigator to traverse these choppy waters and successfully sail your application through to registration.  All it takes is a little bit of “pathfinding” (investigating) on your part, and “charting a course” (developing a strategic approach) for moving forward.

And then I ran out of explorer metaphors.

As consolation, here are some thoughts about how to approach and respond to these kinds of refusals, which are among the most daunting.  Some, but not all, of the tips below apply equally to “likelihood of confusion” refusals encountered in the USA and in trademark offices abroad.

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