U.S. trademark prosecution: The art of the drawing

A few decisions of the Trademark Trial and Appeal Board illustrate how the 'substantially exact' requirement can derail a registration

Applying for a federal trademark is deceptively simple. As noted in the first article in this series, the USPTO issues refusals in more than half of the filed trademark applications, and many refusals stem from a mistake in what is arguably the most fundamental element of the application: the mark.

While a mark can be a word, combination of words, a design, a combination of words and design, or a “nontraditional” mark such as a sound, a scent or a color, difficulties can arise even in applications for “standard character marks,” consisting of words alone. When the applicant submits its “specimen” — a sample of how it uses the mark, the mark in the specimen must match the mark in the application. Compliance with this basic rule requires close collaboration between a company’s creative team and its trademark advisors.

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Marsha K. Hoover

Marsha K. Hoover is a partner at Marshall, Gerstein & Borun LLP who has extensive experience in trademark prosecution and counseling, copyright law,...

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