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Alt Legal Blog

Your source for news, updates and guidance on all things trademarks and intellectual property.

Top 10 Alt Legal Trademark and IP Blog Posts of 2021

Alt Legal Team | December 16, 2021
4 min read

Check out the top Alt Legal blog posts that our community of trademark professionals enjoyed in 2021! Take some time over the holidays to catch up on some reading you might have missed that will certainly inform your trademark practice in 2022.

About the Alt Legal Blog

Alt Legal’s blog is a go-to resource for all things trademarks and intellectual property. Thousands of IP professionals visit our blog monthly for news, updates and guidance as they navigate the world of trademarks and IP.

Articles are generally written by our team, but we also accept guest blogger submissions from experts in the field. If you are interested in contributing to Alt Legal’s blog as a guest blogger, please fill out the submission form.

The Top 10 IP and Trademark Blog Posts of 2021

1. How to Search TESS like a Trademark Examiner

The USPTO’s TESS database offers powerful and free trademark searching. However, learning to search TESS is challenging. Mastering TESS will provide you with unparalleled trademark searches that you can use to identify potential risks that may prevent registration of your trademark, find evidence with which to argue against refusals, and investigate and enforce potential trademark infringement. This article explains how to search trademarks using the TESS database and shares tips and tricks that USPTO trademark examiners use to conduct the most thorough searches.

2. What do Trademark Attorneys Need to Know About NFTs?

Trademark attorneys accustomed to working with clients on the cutting edge should be prepared to handle questions regarding blockchain, cryptocurrencies, and NFTs. Trademark attorneys will increasingly need to “speak” crypto to keep up with their clients. This article provides some background on blockchain, cryptocurrencies, and NFTs, and explains some of the issues that trademark attorneys may encounter.

3. Top 12 Trademark Prosecution Tips from a USPTO Examiner

A USPTO Examiner wrote this very useful article about how to successfully prosecute your clients’ trademark applications. This insider perspective provides tips on improving communication with examiners, conducting TESS searches, and preparing accurate applications that won’t get delayed with trademark office actions.

4. In 2(d)eep: How to Effectively Respond to 2(d) Refusals

One of the most common reasons that the USPTO will refuse a trademark application is due to §2(d) likelihood of confusion. These refusals are some of the most challenging citations to overcome. However, with carefully crafted arguments based on evidence and legal precedent, you can effectively argue that your client’s mark is distinct and ensure that it proceeds to registration. This article provides tips for drafting a successful office action response to a §2(d) refusal.

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5. A Distinct Category: How to Overcome a 2(e)(1) Refusal

The USPTO will refuse a trademark application if the mark is deemed to be merely descriptive of the goods and/or services pursuant to §2(e)(1). This article discusses strategies for overcoming a merely descriptive refusal by demonstrating that the mark is distinct.

6. What the 2(f)?: Demonstrating Acquired Distinctiveness

Pursuant to §2(f), trademark applicants may register descriptive marks to the Principal Register if they are able to demonstrate that the mark has acquired distinctiveness. Learn how to make a successful argument for acquired distinctiveness and overcome a refusal.

7. Letters of Protest: Practical Tips for Filing a Successful LOP

The Letter of Protest (LOP) is a useful tool for trademark practitioners and brand owners. Third parties can use LOPs to submit evidence to the USPTO relevant to the registrability of a trademark during the initial examination of the application.This article provides a roadmap for how to file a Letter of Protest, including new considerations pursuant to the Trademark Modernization Act (TMA), as well as USPTO procedures for processing and acting on LOP filings. We’ve included many useful practice tips to improve your success when filing a LOP.

8. A Coordinated Effort: How to use the USPTO’s Coordinated Classes to perform better knock out searches

One topic that drew a lot of attention at Alt Legal Connect 2020 was coordinated classes, primarily because it was something most hadn’t heard of before! During an interview with former USPTO trademark examiner Courtney Alvarez, Courtney discussed how to conduct advanced searches on the USPTO’s TESS site using coordinated classes. This quick guide will provide you with the information you need to know regarding coordinated classes.

9. What’s Your Major Malfunction?: Breaking Down the USPTO’s Strange New Breed of Failure to Function Refusals

The past several years have seen significant developments in the practice and procedure of the USPTO’s trademark examination corps. Between the U.S. counsel rule, stricter requirements for webpage specimens and a number of high-profile SCOTUS cases which shook up long-standing doctrine, the ever-shifting trademark landscape has been a boon to the Continuing Legal Education industry. But nothing has trademark practitioners scratching their heads, and frankly, punching holes in their walls, as much as the USPTO’s confounding new approach to Failure to Function refusals. This article by former USPTO Examiner John Miranda explains these odd and seemingly inaccurate refusals.

10. How to Use a Trademark Consent Agreement to Overcome a 2(d) Refusal

It can be challenging to overcome an office action citing §2(d) likelihood of confusion. One of the ways that you can help your client to overcome this refusal is to enter into a consent agreement with the other party, allowing both marks to coexist with certain restrictions and understanding. This article explains the considerations you’ll need to take into account when entering into a consent agreement, specifically, provisions to include and others to avoid.

Honorable Mention

Uncommon Knowledge: Priority and Common Law Trademark Rights

When conducting a trademark clearance search, attorneys will frequently encounter a mark that is the same or very similar to the mark being searched but that is not registered with the USPTO. It is important to recognize that even though a mark owner has not registered or applied for a mark with the USPTO, that owner may still have common law rights to a trademark. Learn about how common law trademark rights confer certain rights and will carve out limitations should you attempt to register the same or similar mark with the USPTO.

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