Blog.
Research notes on where legal and market change lands, with sources, deadlines and counsel-ready work kept in view.
Section 18 Lets the TTAB Trim a Registration Instead of Killing It. Most Firms Never Ask.
Section 18 of the Lanham Act (15 U.S.C. § 1068) lets the TTAB restrict a registration's goods or services rather than cancel it, which can dissolve a likelihood-of-confusion conflict while both marks survive. To win the restriction you must plead both prongs of the Eurostar test: that the registrant is not using its mark on the goods you want excluded, and that the exclusion would avoid confusion. Pleaded as an ordinary cancellation, it fails.
ReadAssigning an Intent-to-Use Application Too Early Voids the Registration
Section 10 of the Lanham Act bars assigning an intent-to-use trademark application before you file an allegation of use, with one narrow exception for a successor to the ongoing business. Break that rule, even by moving the application to a parent or holding company, and the application is void and the resulting registration is cancellable years later, with no cure and no deadline.
ReadWhy a Clean Clearance Search Can Still Leave Your Client Junior
A knockout search of the U.S. register cannot see a foreign applicant who filed abroad and has not yet filed in the United States. Under Section 44(d), that applicant has six months to file here and claim the earlier foreign date, so a mark that looks available today can carry a priority date that predates your client's filing.
ReadThe Statement of Use and the 36-Month Cliff Behind the Extensions
An intent-to-use application gives you up to 36 months from the Notice of Allowance to file a Statement of Use, spread across an initial period and five extension requests. The clock runs from the Notice of Allowance, not from each extension, it does not reset, and missing it abandons the application and forfeits the constructive-use priority date the filing was protecting.
ReadIrreparable Harm Is Presumed Again in Trademark Injunctions, and Your Client's Delay Is What Takes It Away
The Trademark Modernization Act restored a rebuttable presumption of irreparable harm to 15 U.S.C. § 1116(a). On a preliminary injunction, a finding of likelihood of success now presumes the harm plaintiffs once had to prove separately. The presumption is rebuttable, and the most common way it falls is the plaintiff's own delay in moving, so the date the infringement is caught sets the ceiling on the remedy.
ReadWhy a Pending Intent-to-Use Application Can Beat Your Client's Earlier Actual Use
Constructive use under Section 7(c) of the Lanham Act relates an intent-to-use applicant's priority back to its filing date once the mark registers, defeating anyone who began using the mark after that date. A clearance search that dismisses a pending ITU application because no one is using the mark misjudges the risk: the filing date, not use in commerce, sets priority.
ReadBona Fide Intent to Use Is a Documentary Test, and Having No Documents Is the Case Against You
An intent-to-use application requires a bona fide intention to use the mark, judged by objective evidence at the filing date, not the applicant's word. Under Commodore and Lane, an opposer can meet its initial burden simply by showing the applicant has no contemporaneous documents supporting that intent. The absence of proof is itself proof, and it voids the application for the goods it touches.
ReadThe Opposition Extension Ladder, and the Free Rung Firms Trade Away
The first extension of time to oppose is thirty days, granted on request with no showing, so asking for the ninety-day extension up front spends a good-cause statement you did not need. Both paths reach the same day 120. Past that the ladder caps at 180 days from publication, and the final sixty-day rung is not available on good cause. It requires the applicant's consent or extraordinary circumstances.
ReadWhat Section 15 Incontestability Actually Forecloses, and What Survives It
Incontestability under Section 15 does one narrow, valuable thing: it forecloses the argument that your registered mark is merely descriptive (Park 'N Fly). It does not make the registration bulletproof. Nine statutory defenses survive it, and the affidavit can be filed after any five consecutive years of continuous use, not only the first.
ReadCentral Attack: The Five-Year Window That Decides Whether Your Client's Whole Madrid Portfolio Survives
For five years, every extension of protection built on a Madrid international registration is tethered to the basic home mark. If that home mark falls within the window, every designated country falls with it. Transformation can save the foreign rights, but only if you file national applications within three months of the cancellation, and that deadline cannot be extended for any reason.
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