Posts Tagged ‘USPTO’

Israel Joins the Madrid Protocol International Trademark Treaty

Thursday, July 1st, 2010

Effective September 1, 2010, Israel officially accedes to the Madrid Protocol.

The Madrid Protocol is an international treaty that aims to facilitate the securing and maintenance of trademark protection on an international basis. The Protocol is administered by the International Bureau of WIPO – the World Intellectual Property Organization. The Madrid Protocol is intended to be a simple mechanism to obtain and maintain registration of trademarks and service marks in multiple jurisdictions through a single trademark office.  So if utilized effectively, for example, it eliminates the need to file separate national trademark applications in each respective jurisdiction. For an updated list of members of the Madrid Protocol trademark treaty, visit www.wipo.org.

Generally speaking, the Madrid Protocol is a useful and cost-effective tool to utilize when seeking trademark registration in approximately five or more Member Countries.  Among the 76+ Members are the U.S., the European Union, Australia, Japan, and China.

A sample of some countries and regions that are not a part of the Madrid Protocol include: Canada, Egypt, Hong Kong, Indonesia, Malaysia, Mexico, New Zealand, the Philippines, South Africa, Taiwan, Thailand, the Arab Region (Lebanon, Iraq, etc.), and the Latin American region (Brazil, Argentina, Chile, etc.).  Therefore, in order to obtain trademark protection in those countries, separate trademark applications would have to be filed in each country through the respective national trademark offices.

If you have any questions relating to the Madrid Protocol or trademark law in general, please call Darren Geliebter or Mathew Lombard at 212-551-1755.

Benefits of Trademark Registration with the USPTO

Friday, June 25th, 2010

Every now and then I think it’s worthwhile to remind everyone of the benefits of registering your trademark with the U.S. Patent & Trademark Office:

  • Prima facie evidence of the validity of the registered mark and registration, the registrant’s ownership of the mark, and the exclusive right to use the mark in commerce in connection with the specified goods or services.
  • Prima facie evidence of continued use since the filing date of the application.
  • “Incontestability” after five (5) years of continuous use and the filing of an affidavit conforming to the requirements of 15 U.S.C. § 1065. Incontestability precludes cancellation of the registration on the basis of prior use or descriptiveness.
  • Constructive notice of the registrant’s claim of ownership of the mark.
  • Mark will be easily found on searches conducted by third parties.
  • Nationwide rights (with certain qualifications).
  • The right to bring suit in federal court regardless of diversity.
  • Constructive “first use” date as of the filing date of the application (applies to intent-to-use applications).
  • Statutory remedies, such as mandatory treble damages and criminal penalties in counterfeit cases.
  • The ability to bar importation of goods bearing infringing trademarks by depositing the registration with U.S. Customs Service.
  • Rights under the Paris Convention, including Convention priority rights on foreign filings and the right to registration abroad based upon registration in the United States.
  • Deter a second comer from adopting a similar mark, thus avoiding expensive and time-consuming litigation.
  • Allowed to use the ® designation in connection with the registered mark.

CETAPHIL Success

Monday, April 27th, 2009

cetaphilWe are pleased to have been able to assist our client, Galderma, overcome a refusal from the USPTO claiming that the specimen submitted along with the application did not match the drawing.

After a first refusal and a response, a second, final refusal and Request for Reconsideration and a Notice of Appeal, the Examining Attorney finally withdrew the refusal.

You can view the file here.

Octomom Seeks Trademark for … Well … OCTOMOM

Saturday, April 25th, 2009

Nadya Suleman, aka Octomom, has filed a trademark application for the mark OCTOMOM, ensuring her ability to make money from her moniker.

Her applications cover entertainment in the nature of on-going television programs in the field of reality shows in Class 41, disposable diapers in Class 16 and dresses; pants; shirts; textile diapers in Class 25.

You can access information about her application here and here.

Beware: She may have competition here.

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