An assignment in gross is not valid. Worse, it will cause the trademark to be deemed abandoned. This means the assignee does not acquire trademark rights and the assignor (trademark owner) loses them. The priority date of the trademark is also lost. These are drastic consequences. They are deemed necessary to prevent consumer confusion. The
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Yes. Trademark rights can be lost through naked licensing. If a trademark owner fails to exercise reasonable control over the licensee’s products or services, the trademark may cease to function as an accurate identifier of the source of the product or services. The purpose of a trademark is to inform consumers about the source of
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To maintain a trademark registration and avoid a finding of abandonment, the trademark owner must file the necessary renewal documents at specified intervals. Renewal documents must be filed between the 5th and 6th year after registration, between the 9th and 10th year, and every 10 years thereafter. Renewal requires the payment of filing fees.
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An Office Action is a communication from the USPTO, normally from the Trademark Examiner assigned to your application. It can address a wide variety of matters related to an application. These range from minor errors to a problem serious enough to prevent registration of the trademark. The appropriate response to an Office Action will vary
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A “live” trademark registration or application is one that is active (on either the Principal or Supplemental Register), or pending (one that has been applied for and is undergoing examination.) A “dead” trademark registration or application for registration is one that has been abandoned, withdrawn, or cancelled. The distinction is important because the USPTO will
The presumption of abandonment that arises from three consecutive years of nonuse may be rebutted by proof of intent to resume use. Simply asserting an intention to resume use at some indefinite time in the future, however, probably will not be enough to overcome the presumption. The presumption may be overcome by providing a valid
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Yes. The maxim, “Use it or lose it ” applies to trademark law. Trademark rights continue only so long as all five criteria for the existence of a valid trademark continue to be met. Those criteria are: (1) a word, symbol or other thing; (2) use in commerce; (3) functions as an identifier of the
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