There will come a time when you need to decide whether to take action against someone’s use of a trademark that is similar to your very own trademark.  A moment will come and you will be required to ask yourself—

Is this use and adoption by a competitor confusingly similar? Am I being over protective of my trademark rights? Should I just look the other way and let this infringing use slide?

If you even have to stop and think about the similarity between your trademark and another person or company’s use or adoption of a trademark—you need to act and you need to act quickly to determine if your trademark is being infringed upon. The date you discover or should have been aware of someone’s similar and infringing use of a trademark matters. Every day you choose not to act counts against you.

You need to be vigilant and monitor unauthorized trademark uses by third parties.  You cannot sleep on protecting your trademark rights.

If you find yourself in this situation, these are some important questions you need to ask yourself:

  1. Is the third party’s adoption and use of a designation infringing upon your trademark rights?
  2. Is the infringing use and adoption of a designation by a competitor?
  3. How long has the use and adoption of the designation been going on?
  4. Does the competitor have knowledge of your business activity or product line that is being offered under your trademark that you believe is being infringed upon?
  5. Is there a way to coexist?

Coexistence is only possible if there is no possibility of confusion or if you are willing to allow someone to use the infringing designation in a restricted or limited manner. If you are offering the same services, if you are offering these same services in the same cities, if you are targeting the same type of customers, co-existence is impossible and should be avoided at all costs.

By ignoring the infringing use, you are not only harming your trademark’s development and recognition—you are allowing the infringing third party to invest and devote their hard-earned resources in a trademark that will ultimately be enjoined from being used.

The greatest gift you can bestow upon a company and or individual that has adopted and started to use an infringing designation similar to your federally registered trademark is to give that company and or individual immediate notice that that company and or individual needs to adopt and use a different trademark.

-Juliet A.

If you find yourself at the onset of a new venture and you are accused of having adopted an infringing trademark—you need to consider whether the claims of infringement are valid, and if so, whether immediately cutting your losses and adopting a new trademark outweighs the costs associated with having to defend a lawsuit if the trademark owner refuses to go away and permit your trademark’s coexistence.

Hemp Federal Trademarks are delayed-What’s the Holdup?

December 20, 2018 opened the door for HEMPtrepreneurs. This is the day that the Farm Bill passed. The Farm Bill removed hemp, which is defined as cannabis (Cannabis sativa L.) and derivatives of cannabis with extremely low concentrations of the psychoactive compound delta-9-tetrahydrocannabinol (THC) (no more than 0.3 percent THC on a dry weight basis), from the definition of marijuana in the Controlled Substances Act (CSA). HEMPtrepreneurs got excited and started filing Federal trademarks.

My friend’s hemp trademark application has been approved. My application has not been approved or even examined. What gives?

Your examination and approval depends upon a variety of things. (This is not an exhaustive list of considerations taken into account by the United States Patent and Trademark Office (USPTO).

  1. The word, slogan, design being available (no other similar mark is pending or active before the USPTO).
  2. You the applicant having a bona fide intent to use the applied for trademark.
  3. The applied for trademark’s use would be lawful. Hemp’s new definition makes it sometimes lawful.

English please.

Bona fide intent means you, the applicant, really plans on using the applied for trademark to market the goods/services listed in the application. You are not just trying to prevent someone from registering a word, slogan, or design trademark.

Lawful use means the sale or advertisement of the good or service complies with the federal laws of the United States. Trademark Manuel of Examining Procedure (TMEP) Section 907.

Hemp and Cannabis have different definitions under federal law and receive different treatment. Cannabis/Marijuana remains a federally controlled substance because of its THC concentration. This means it is unlawful on the federal level.

Your classification of goods/services matters.

The products and services you list could trigger concerns of compliance with the Controlled Substances Act, (CSA), the Food and Drug Administration (FDA) and or the Federal Food, Drug & Cosmetic Act (FD&C).

If your application gets flagged because of the goods and or services listed in your application, what are some questions you could be required to answer?

  1. Do or will the goods include cannabidiol (CBD)?
  2. If so, will there be more than a trace amount of CBD in the goods, e.g., more than 50 parts per million (PPM)?
  3. Do or will applicant’s identified goods include CBD which is derived from, oils, extracts or ingredients from plants other than Cannabis sativa L (also known as hemp, marijuana or cannabis)?
  4. Is applicant currently seeking FDA approval of the marketing of its goods identified in the application?
  5. If the answer to Question 4 is “yes,” please provide a copy of such application.
  6. Do or will applicant’s identified goods include or be used with any oils, extracts, ingredients or derivatives from the plant Cannabis sativa L (also known as cannabis, marijuana or hemp)?
  7. If the answer to Question 1 is “yes,” does the cannabis used with or to be used in applicant’s goods contain more than 0.3 percent delta-9 tetrahydrocannabinol (THC) on a dry weight basis?
  8. If applicant has any documentation relative to the THC content of the oils, extracts or derivatives used or to be used in the goods, please submit them with the response.
  9. If applicant’s goods do or will contain oils, extracts, ingredients or derivatives from the plant Cannabis sativa L which has more than 0.3 percent delta-9 tetrahydrocannabinol on a dry weight basis, identify the part or parts of the plant used in obtaining the oils, extracts, ingredients or derivatives.

These are typical questions asked when the FD&C is implicated by the goods/services listed in your application.

What does this have to do with processing my application?

You will receive an office action if your application listed products like creams, dietary supplements, topical analgesics (Class 005) products– you will not pass go until the FD&C law changes. The examination of your application will be delayed because of the backlog at the USPTO related to reviewing these kinds of applications. As of July 7, 2020, the USPTO is processing June 2019 federal trademark filings with no specific timeline for trademark applications filed after June 2019. The USPTO has even created task forces to assist in the review and examination of these kind of Class 005 trademark filings.

If your application triggers concerns of violating the CSA rather than the FD&C because of the type of products listed, your Examining attorney might give you the option of amending your filing date and or filing basis of your application to overcome a CSA refusal. If that option is not available to you, you could argue against the refusal or abandon your pending application and start the process over. You could also be asked and required to answer different kinds of questions.

What are some things the CSA prohibits?

The CSA prohibits among other things, manufacturing, distributing, dispensing, or possessing cannabis that meets the definition of marijuana. The CSA also makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, i.e., “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under [the CSA].” 21 U.S.C. §863.  This means the USPTO will continue to refuse registration when the identified services in an application involve cannabis that meets the definition of marijuana and encompass activities prohibited under the CSA because these kinds of services still violate federal law regardless of the application filing date.

What kinds of questions are asked when the USPTO is concerned with compliance with the CSA?

  1. Do applicant’s identified goods include or contain marijuana, marijuana-based preparations, marijuana extracts or derivatives, or any other illegal controlled substance?
  2. Are applicant’s identified goods used or intended for use in connection with marijuana, marijuana-based preparations, marijuana extracts or derivatives, or any other illegal controlled substance?”
  3. Upon information and belief, do applicant’s goods comply with the Controlled Substances Act?

Any good news?

If your application listed products like clothing (Class 025) or dried hemp being a tobacco substitute for smoking; loose dried hemp flower being a tobacco substitute for use in pipes, rolled cigarette all the foregoing containing no more than .3% THC on a dry-weight basis (Class 034) your application’s examination process would be standard or just slightly delayed provided you are able to show your trademark’s proposed use would be lawful.

Improper classifications waste time. Time is money.

-Juliet A.

The classification of your goods and or services should not be taken lightly. The USPTO trademark application process is transparent and public. Anyone with access to the internet can review your USPTO trademark filings. Before filing a federal trademark application you should be make sure your bona fide use is a lawful use.


The United States Patent and Trademark Office (USPTO) is cracking down and is conducting random trademark audits.

What is a trademark audit? 

Examining attorneys are issuing letters to registered trademark owners after owners submit their proof of use aka declaration of use in support of the renewal and maintenance of their federally registered trademarks. 

Your registration may be audited if you meet both of these requirements:

1. You filed a Section 8 or 71 declaration of use and your registration identifies at least one class and you listed four or more goods or services in your class description.

What does that mean? Say your registration covers purses, wallets, back packs, luggage tags and suitcases (all in Class 18).


2. Your registration identifies at least two classes and you listed two or more goods or services

What does that mean? Your registration could identify three classes, Class 18, 25, and 35. 

The items identified are Purses and suitcases (all in Class 18)

Clothing, namely shirts, shorts, pants, coats and hats (Class 25)

Retail clothing stores (Class 35).

What is proof of use?

Proof of use is exactly what it sounds like. The USPTO requires proof that the trademark you say you are using you are actually using. The day you get your trademark determines when you will have to submit this proof of use.

Proof depends entirely on the products and services you sell and advertise to the public. Your registered trademark identifies the products and or services you are advertising and selling. When you initially started the application process so many years ago, you could have been offering and selling everything listed in your application which eventually registered with the USPTO. 

Now it is time to renew your trademark and you are not selling and or advertising all the products listed in your trademark registration. What do you do?

It’s easier to understand all this by me giving an example. It’s possible your trademark registered and identified the following items: cosmetic creams, dietary supplements, hair gel, shampoo and conditioner. Your maintenance and renewal deadline arrives and your business stopped selling shampoo and conditioner three years ago. Your business lost interest in selling hair gel four years ago. The only products your company sells today under your registered trademark are cosmetic creams and dietary supplements. You are required to eliminate the products you initially listed in your registration that your company stopped advertising and selling. Representing you are still selling items you are not opens your registration up to attack by third parties besides being a crime under federal law. Just be honest. 

But wait, I stopped selling them but I have every intention of selling these products again.  What should I do?

The USPTO recognizes sometimes things happen outside of your control which should excuse your not having sold or advertised your trademark with the goods and or services listed in your registration following your trademark’s registration.  You will have to file an affidavit or declaration explaining the circumstances and date use in commerce stopped and give the approximate date when use is expected to resume. 37 C.F.R. §7.37(f)(2). You are required to specify the reason(s) for nonuse, the specific steps being taken to put your trademark in use, and any other relevant facts to support a finding of excusable nonuse.

The goods/services/classes for which excusable nonuse is claimed must be specified.  See TMEP §§1613.09 et seq. regarding proper specification of the goods/services/collective membership organization.

If your registration identifies multiple classes and multiple goods or services, you must list detailed facts related to the nonuse for each class to which your affidavit or declaration pertains, or it must be clear that the facts recited apply to all the classes. Each situation is different. Still have Questions? We have answers. Feel free to reach out to one of our Trademark Now Franchise Later® attorneys today. 

Honesty is the best and only policy when it comes to the USPTO.

-Juliet A.



Your failure to apply and register your trademark with the United States Patent and Trademark Office can result in unnecessary stress and litigation.

If someone says your rights are not protectable because your trademark is not federally registered with the United States Patent and Trademark Office, ask yourself: 

1. Does my use pre-date the challenger’s date of first use?

2. Does my duration of use exceed or meet the amount of time necessary to establish the laches defense which would enable my continued use of the trademark?

3. Is my usage of my trademark continuous and uninterrupted in the geographic area where I sell my products/offer my services?

4. Did I know someone else was using a similar or identical service mark to advertise similar or identical services? Did I know someone else was using a similar or identical trademark to sell similar or identical products?

5. Am I financially solvent and able to withstand a lawsuit if the challenger of my common law rights refuses to go away? 

These are just some questions you should ask yourself if someone comes forward and says your common law trademark rights are not protectable and or are not valid.

Take the time to protect what could be the most valuable asset in your company.

-Juliet A.