Top 10 Alt Legal Trademark and IP Blog Posts of 2023
Alt Legal Team | December 01, 2023
Check out the top Alt Legal blog posts that our community of trademark professionals enjoyed in 2023! Take some time over the holidays to catch up on some reading you might have missed that will certainly inform your trademark practice in 2024.
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.
1. How to Search Using the USPTO’s New Trademark Search Tool
On November 30, 2023, the USPTO retired its longstanding TESS search database, introducing a new trademark search system. The new system is a powerful tool which identifies potential risks that could prevent a trademark from registering, assists with enforcing an existing trademark, and provides a wealth of detailed information for both attorney marketing and academic research. This article, written by IP attorney and former USPTO Trademark Examiner Rachael Dickson, explains how to conduct various types of searches using the new search tool while drawing comparisons with TESS and explaining pros/cons of each system.
2. 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 and preparing accurate applications that won’t get delayed with trademark office actions.
3. 10 Things Every Trademark Attorney Should Know About Patents
Patent attorney Steve Cooper breaks down the complexities of patent law so that trademark lawyers can confidently spot patent issues for their clients. He explains filing deadlines, priority rights, utility and design patents, distinctiveness, terms, and more. Also, be sure to check out this article by patent and trademark attorneys Celia Leber and Linda Chan: The Difference Between Trademarks and Design Patents: What you need to know
4. Bad Spaniels Before the Supreme Court: How the Case Could Affect the Tension Between the Lanham Act and the First Amendment
IP attorney Daphne Benford-Smith analyzes the key trademark case of 2023 before the Supreme Court, Jack Daniels Properties, Inc. v. VIP Products, LLC (the “Bad Spaniels Case.”) She provides a history lesson on how the 2nd and 9th Circuits have determined trademark infringement cases involving First Amendment Defenses, and in particular, describes application of the Rogers test. Also, check out Daphne’s follow-up article analyzing the Supreme Court’s decision in the case: Joke Gone Unanimously Wrong: SCOTUS Decision in Bad Spaniels and the Future of First Amendment and Lanham Act Cases
5. 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.
6. A Coordinated Effort: How to use the USPTO’s Coordinated Classes to perform better knock out searches
This article provides an overview of the USPTO’s coordinated classes – what they are exactly, how to use the USPTO’s new search system to search within coordinated classes, how you can use coordinated classes to conduct advanced searches, and tips for better searching using coordinated classes.
7. 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.
8. 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 in the new 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.
9. Uncommon Law: Priority and Common Law Trademark Rights
When conducting trademark clearance searches it’s important to recognize that common law trademark rights exist and may prevent your client from being able to fully utilize their mark. This article explains what common law rights are and how the rights differ between common law and federally-registered USPTO trademarks.
10. Behind the Jingles: Legal Strategies to Protect Sound Trademarks
IP attorney and former USPTO trademark examiner John Miranda describes sound marks and how the USPTO examines and registers sound marks. He also provides important tips for successfully prosecuting a sound mark application.
Bonus:
While this isn’t a blog article, our new guide Alt Legal for Law Students is a helpful set of resources for law students to build their knowledge and expand their networks as they pursue careers in IP and trademark law. We also wrote a blog article that outlines how law students can tailor their law school experience towards a successful career in trademark law: A Law Student’s Guide to Becoming a Trademark Lawyer.