Top 10 Alt Legal Trademark and IP Blog Posts of 2022
Alt Legal Team | December 04, 2022
Check out the top Alt Legal blog posts that our community of trademark professionals enjoyed in 2022! Take some time over the holidays to catch up on some reading you might have missed that will certainly inform your trademark practice in 2023.
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 2022
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. Starting Your Own IP Practice
There’s no better time than the new year to start your own solo law firm! Perhaps you’ve resolved to achieve better work-life balance this year or to become your own boss – establishing your own IP practice is key to both. This guide will help you understand the process for setting up a solo IP law firm. It includes practical tips for getting organized and essential technology tools that will help you succeed. Also, be sure to check out our webinar, Firming Up Your Plans: How to start your law practice, for a discussion on exiting your current position and setting yourself up for success in your own practice.
3. 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.
4. 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.
5. Overcoming a §2(d) Likelihood of Confusion Office Action, Part 2: Entering into a Consent Agreement with Parties Cited in Refusal
2(d) Likelihood of Confusion refusals are often some of the most difficult hurdles to overcome when prosecuting a USPTO trademark application. IP attorney M.J. Williams participated a 3-part series for our blog providing creative solutions to successfully overcome examiners’ refusals. In this article, set forth in Q&A format, M.J. breaks down the process of securing a consent agreement with the owners of the cited registration, highlights a creative side agreement that she arranged, and provides practical tips for all practitioners.
6. A PI’s Perspective: How to Conduct Reasonable Investigations for Expungement & Reexamination Proceedings
Since the Trademark Modernization Act was enacted in December 2021, there have been over 180 expungement/reexamination petitions filed. Submitting evidence constituting a reasonable investigation is a crucial factor that the USPTO considers when initiating a proceeding. In this article, Tamara Rabenold, IP private investigator and owner of Vaudra International, a company specializing in IP and corporate investigations, shares helpful resources and tricks of the trade that will help you present thorough evidence to the USPTO for your TMA proceedings.
7. How to Respond to Section 2(e)(4) Surname Refusals: A Video Q&A with IP Attorney John Miranda
Surname refusals are on the rise with the USPTO. As a result of trademark clutter and depletion, trademark applicants are simply running out of eligible trademarks to choose from. In response, applicants are increasingly filing applications with their surnames and receiving surname refusals from the USPTO. IP attorney and former USPTO trademark examiner John Miranda joined us to discuss surname refusals and how to overcome them. Check out the video interview and review our written summary.
8. 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.
9. WIPO Basics: Key considerations, from cost to culture, when filing trademarks around the world
In this guest blog article by London-based IP attorney, Rosie Burbidge of gunnercooke, LLP, you’ll get an overview of WIPO filings under the Madrid System. Rosie discusses pros/cons of filing with WIPO and outlines a case study comparing a WIPO filing versus individual jurisdiction filings. Also, be sure to check out the Alt Legal Webinar where Rosie further discussed WIPO filings: Why go WIPO? Key considerations, from cost to culture, when filing trademarks around the world
10. Monetizing Alt Legal’s §2(d) Trademark Watch+ Tips to Help you Build More Business
Over the course of 2022, so many of our customers have let us know that they’ve been able to use Alt Legal’s §2(d) Trademark Watch to find potential infringement and develop more business. Check out one of our customer’s stories here. §2(d) Trademark Watch monitors all of the marks in your docket and notifies you whenever your marks are cited in an office action that refuses the applied-for mark based on §2(d) likelihood of confusion with your client’s mark. This article discusses how you can monetize your subscription to §2(d) Trademark Watch and achieve a positive ROI.
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.