There seem to be only two types of stories about trademarks that the media picks up: 1) Trademarks filed by celebrities and 2) Stories about a big company picking on a small business for supposed similarities in business names or logos. Yesterday there was a celebrity trademark story on Rolling Stone that got picked up today by CNN. MTV is also running the story. The only problem is, it's wrong. And not just a little wrong, but completely wrong! In fact, like so many media stories written by journalists and not subject matter experts, it's a mess of confusion. Here are the links: Rolling Stone story; CNN story. Now MTV. Doesn't anyone check facts anymore? Let's break it down. We'll start with the first sentence: "Jay-Z and Beyoncé can't trademark the name of their daughter, Blue Ivy, the U.S. Patent and Trademark Office has ruled, which means the Boston wedding planner Blue Ivy can continue to use the name." Wrong! In fact the USPTO has already ruled that they can trademark the name of their daughter in 11 classes (categories) of products and services, and will shortly allow the application for all remaining requested classes. The USPTO initially required some additional information from Jay-Z and Beyonce's company (BGK Trademark Holdings), and refused registration of the BLUE IVY CARTER trademark in a few classes (categories) of products and services out of the 14 it was filed in. BGK's counsel promptly responded and overcame all objections except for one: a refusal in one class only, based on an application filed earlier by an impostor (which may well have prompted Jay-Z and Beyonce's trademark application in the first place). Of course the impostor's application was refused, which is why on Monday (10/21) BGK's counsel requested that the application, which was suspended pending the outcome of the impostor's application, be fully approved. This request will be granted. So in fact, the very first sentence is the exact opposite of reality. Let's go to the next sentence: "The superstar couple filed a petition to trademark the name "Blue Ivy" shortly after their daughter was born in January, seeking to reserve it for use as a possible brand name for a line of baby-related products, including carriages, diaper bags and baby cosmetics." Actually, they reserved it for 14 different categories of products and services, including cosmetics, key chains, paper flags, trading cards, mugs, beach balls, online video games, and more. Next: "'I knew this was going to be a bittersweet roller coaster,' Alexandra, 32, tells Rolling Stone. 'If this wasn't going to work, I'd go after both of them. Like, 'Let’s do it!' In my mind I had some protective rights. There's no way by way of being a celebrity they should have entitlement [to the name]. Shame on them.'" This is just total gibberish. This woman's application was never refused by the Trademark Office, never opposed by Jay-Z and Beyonce. There was no roller coaster, it was smooth sailing for her right through the Trademark Office to registration. In fact, Jay-Z and Beyonce are (to the best of my knowledge) entitled to use of the name as a trademark, by virtue of being the first to file a trademark application in many of the classes. I have no idea why "Alexandra" think they should be ashamed. I think the real story here is "Alexandra" duping the Rolling Stone into running a puff publicity piece for her company! And last paragraphs: "Still, Alexandra, who named the company to convey romantic traditionalism, says the trademark dispute has been a blessing in disguise. 'For me it was a very large compliment,' she says. 'All in all I was extremely happy that my design capacity is pretty badass.' The entrepreneur’s main takeaway? 'Money doesn't buy everything.'" Except there was no trademark dispute. I guess Jay-Z and Beyonce naming their daughter the same thing as her business was the blessing in disguise, because she got all this free publicity out of it. Who is her PR guy? Sign me up!

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As noted in this post, U.S. design patents usually need to be filed within 6 months of a foreign priority application. This is because many foreign design registration systems grant design registration almost immediately, guaranteeing that the registration will be granted before your U.S. design patent application is filed and implicating 35 U.S.C. 102(d) (see also MPEP 1504.02). Thus if you wait longer than 6 months from your foreign design registration, you will lose the right to get a U.S. design patent. So what if you miss the deadline? What are your options? Well, you can try to shoehorn your design into one of the other kinds of IP protection: copyright, trademark, or utility patent protection. You might also consider relying on unfair competition law to protect you. I will address each of these four alternatives to design patent protection in turn.

1. Unfair Competition

In European countries, the laws of unfair competition might be sufficient to protect you from competitors seeking to copy your designs. Some European countries have laws of "slavish imitation" for example, which protect you against exact duplication of products, even if not protected by IP. However, in the U.S. such laws are very limited in scope. They are also state laws, which vary from state to state. The U.S. Supreme Court has held that copying a public domain (unprotected) design cannot in itself be the basis for a claim of unfair competition. There would have to be something more suggesting that the competitor was trying to pass itself off as your company. Essentially, you would have to show that your competitor was actually impersonating you. So unfair competition laws would be a last resort if you had no other options

2. Copyrights

Usually when an overseas client misses a date for a design patent filing, the first alternative they think of is copyright protection. However, copyright protection is frequently unavailable because copyrights do not protect functional objects. Even if there are artistic elements to a functional object, they have to be physically or conceptually separable to be copyright protected, which is a higher standard than it may seem. Basically, if the artistic part can be removed form the rest of the object, or if the design is a carving or graphic design that could be placed on any medium, not just the functional object, it probably can be protected by copyright. But even if your functional object looks really cool and could be considered a sculpture, it probably is not going to pass muster. Copyright protection is a good alternative if available, as it is inexpensive ($35 government filing fee) and pretty fast (6-12 months) and lasts a long time (95 years for corporations). However, copyrights only protect against copying, not independent development- you have to show access to your design to prove copyright infringement.

3. Utility Patents

If the design has a function and is new and nonobvious, you may be able to get a utility patent for it. The downside of utility patents is that they are expensive and take a long time to be granted. The plus side is that they protect the function of your design, not just the appearance, and can have a very broad scope of protection. They last for 20 years from filing and protect against independent development, unlike copyrights. However, utility patent protection is often unavailable (due to lack of functionality) or impractical due to the expense.

4. Trademarks / Trade Dress

Of course even if you cannot protect your new design, you can brand your products and protect those brands with trademarks. However, your design itself may be protected as a trademark under U.S. law as trade dress. Generally both a product's shape and configuration and a product or service's "packaging" can be protected in this way. Service "packaging" might include the appearance of a restaurant or the like. Registering trade dress as a trademark is more difficult than for other trademarks like business names and logos. A product configuration is never considered inherently distinctive, so it must either be registered on the Supplemental Register or you must prove distinctiveness through long and continuous use, advertising expenditures, actual advertisements showing that the trade dress is emphasized, survey evidence showing recognition by customers, and ultimately an association between your business and the product configuration in the minds of consumers. A design must be in use to be amended to the Supplemental Register. The Supplemental Register does not grant any special legal strength beyond common law trademark rights but does allow you to sue in federal court and does prevent others from registering an identical mark, and also allows you to  use the registration symbol ®. Packaging can be inherently distinctive, but this is more difficult to show than for other marks. You also have the option of showing acquired distinctiveness as for product configuration. Trademark protection lasts indefinitely as long as you continue using the mark and paying the renewal fees. It protects against confusingly similar marks used by others, whether deliberately copied or not. Expense is reasonable, as is the time to grant. Often, trademark protection is the best available alternative to design patent protection.

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Should I Trademark My Business Name or My Logo?

by Clifford D. Hyra on August 31, 2011

Trademarks protect branding- things like your business name and your logo that you put on your products so that your customers know they are not knock-offs or imitations. For a really big business, a brand is worth big bucks and the cost of a trademark registration is small in comparison. So for a big company it is a no brainer to register all their branding- business name, logos, slogans, even names of individual product lines. But smaller businesses are often working on a limited budget. The benefits of trademark registration are not so obviously greater than the cost of registration, which can be close to a thousand dollars, depending on the difficulty of registering the trademark and the law firm used. So, many business owners decide that they want to limit their registration to a single trademark, and are left with a decision between registering their business name and their logo.

Registering Your Business Name as a Trademark

Usually, I recommend registering your business name if you are only going to register one trademark. A business name should be registered with a "standard character claim," meaning that your registration covers your name regardless of the font, case, and any stylistic or graphic elements used. This gives you broad protection and prevents an infringer from claiming no confusion would be likely because its mark uses a different font, etc. Registering your business name with a standard character claim protects you against any use of the name, inside or outside of a logo or design. And for many businesses, their name is the most important thing to protect. After all, your name is what people use when discussing or referring your business to others. And if your logo is minimalist, the other visual elements may not be that memorable anyway. The downside of trademarking your business name alone is that it offers no protection for the design elements of your logo. You still may have common-law rights to your logo, but you would lack the important benefits of trademark registration. Another business could begin using a similar logo with a different business name, and that could be difficult for you to stop.

Registering Your Logo as a Trademark

The advantage of registering your logo is that it protects both the design elements of your logo and your business name (assuming that your logo incorporates your business name). However, there are many disadvantages. For one thing, your protection for your name will be somewhat weakened. Another business seeking to register a logo with a similar name can argue that confusion would be unlikely because of the design differences between the two marks. Such an argument can succeed, particularly if your business name might be considered descriptive of the business you are in. I have successfully made such arguments, and even have advised clients that they could get around a third-party registration if they registered their brand with a certain stylization or design element. Another potential problem is that logos can change over the  years. Even the largest corporations rebrand once in a while. When your logo changes, your old logo trademark registration goes out the window. Now you have to file a new registration for your new logo. Your old registration, if it was in use for five  years, may have become incontestable, greatly strengthening it in legal disputes. Your new registration will not be.

Register Your Business Name - Usually

For the above reasons, I usually recommend that my clients register their business names if they only want to file one registration. An exception might be if their name could run into a conflict that their logo would have a better chance of avoiding, or if the design element of their logo is critical or especially distinctive. However, even if you really like and want to protect the design element of your logo, I would strongly suggest looking into registering both your logo and your business name alone. If you have any questions about the costs vs. benefits, I would be happy to help you answer them!

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Listing the correct inventors on your patent application is important. Having an incorrect listing can result in invalidity or unenforceability of your patent, loss of ownership rights, and other serious issues. Determining the correct inventorship for a patent application is a legal matter that should be determined by your patent attorney. Two types of errors can be made with regard to inventorship, misjoinder and nonjoinder. Misjoinder is where a person listed as an inventor is not actually an inventor. Nonjoinder is where an actual inventor is not listed as an inventor. If there is no intent to deceive on the part of the person improperly listed or not listed, these errors can be corrected either while the patent application is still pending or after issuance of the patent. However, correction should be made as soon as possible. If the list of inventors is erroneous due to an attempt at deception by the improperly named or unnamed inventors, the application's inventorship cannot be corrected. In some circumstances, the inventorship of an issued patent can be corrected in spite of a deceptive intent, although the patent may be unenforcable (that will be addressed in a future post). The procedure for correcting a provisional patent application is explained below. The procedure for nonprovisional applications differs, and will be explored in a future post.

Provisional Patent Applications

The inventorship of a provisional patent application can be corrected relatively easily. See 37 CFR §1.48(d)-(e).

Improper Nonjoinder in a Provisional Patent Application (37 CFR §1.48(d)):

To add inventors improperly omitted from a provisional patent application, the following items must be submitted:
  1. a request; and
  2. a provisional application processing fee, currently $50.
The request should identify the inventors being added and state that the error occurred without a deceptive intent on the part of those inventors. This request can be signed by the prosecuting patent attorney.

Improper Misjoinder in a Provisional Patent Application (37 CFR §1.48(e)):

To remove inventors improperly included on a provisional patent application, the following items must be submitted:
  1. A request, including the change in inventors;
  2. A statement by the people being removed that the error occurred without a deceptive intent;
  3. A provisional  application processing fee (currently $50); and
  4. Written consent of the assignee (if an assignment was executed by any of the originally named inventors)

Where a Provisional Application Cover Sheet Has Not Been Filed (37 CFR §1.48(f)(2))

If a provisional application cover sheet was not filed with the application, the inventorship will be automatically corrected when the cover sheet is filed (to whatever information is given on the cover sheet).

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Perhaps the question that I address most frequently with my clients is whether to file a provisional or nonprovisional  patent application. A nonprovisional application is an ordinary patent application. A provisional patent application is a special kind of application that is not examined or published, has minimal formal requirements, and expires 12 months after filing. Before the provisional patent application expires, a full nonprovisional patent application should be filed, claiming the "priority" (filing date) of the provisional patent application. If the provisional patent application adequately describes the invention claimed in the later nonprovisional application, the nonprovisional patent application will be entitled to the same filing date as the provisional application. Thus, the applicant does not need to worry about someone duplicating his invention in the interim. So if you have to file a nonprovisional patent application eventually anyway, what is the point of filing a provisional patent application? Click below to read on...

Advantages of Provisional Patent Applications

  1. Low Up-Front Cost - Because provisional patent applications have few formal requirements, less time needs to be spent perfecting the figures, drafting the claims section (which is not even required), etc. A provisional application also has lower government fees. Therefore, a provisional patent application is typically significantly less costly than a nonprovisional patent application.

  2. Buys You Time - A provisional patent application buys you an extra 12 months before having to spend the time and money to put together a full nonprovisional patent application. During that time you can look for partners, manufacturers or distributors, funding, etc. You can even do market research or bring your product to market to help determine whether your new product idea is commercially viable.

  3. Ease of Adding New Material - Whenever you file the nonprovisional application, you can include whatever new material you like without difficulty. If you want to get the earliest possible filing date for the new material, you can even file one or more additional provisional applications for the new material and then file a single nonprovisional patent application that combines all of your provisional patent applications. In contrast, to add new subject matter to a nonprovisional patent application, a continuation-in-part application must be filed, which adds cost and delays examination of the new material.

  4. Lack of Publication - A provisional patent application can be filed at low cost and then simply be allowed to expire if for whatever reason the idea turns out to be non-viable. The application is never published and so does not become public knowledge or bar you from applying for a patent in the future.

  5. Extends Patent Protection - Patent protection lasts 20 years from the time of filing. This time runs from the date of filing of the nonprovisional application, not the provisional application. So by filing a provisional application first, a year is added to the back end of your term of patent protection.

Disadvantages of Provisional Patent Applications

  1. Higher Total Cost - Since a nonprovisional patent application must be filed in any case, ultimately the total cost to obtain a patent will be higher if you start with a provisional patent application.

  2. Delays Examination - A provisional patent application is not examined, and your application does not even "get in line" for examination until your nonprovisional patent application is filed. Thus, if you wait the full year before filing the follow-up nonprovisional, examination will be delayed by one year. With delays of up to 4 years at the time of this post, the extra delay can be a major factor.

  3. Increased Risk for Small Entities - The lack of formal requirements encourages disreputable companies and patent attorneys and agents to take advantage of the lack of sophistication of many small entities. Beware low-priced providers like Legal Zoom who promise "provisional protection" for a few hundred dollars. If your provisional application does not provide proper legal support for the claims written into your later nonprovisional patent application, you will lose your original filing date, wasting your money and opening the door for challenges to the patentability of your application and to the validity of any granted patent.

Provisional Patent Application Recommendations

For most of my small entity clients, I recommend that they start with a provisional patent application. Usually they are still developing their invention or looking to stake out their rights inexpensively before doing a thorough investigation of the feasibility of their product in the market. A provisional application gives them the flexibility, low cost, and early filing date they are looking for. On the other hand, if an invention is fully fleshed out and ready to go, and the client knows it wants to go forward with the entire patent process, a full nonprovisional patent application is the way to go. Skipping the provisional application results in lower overall costs and in a granted patent as quickly as possible. The other thing I always recommend is that, if the client opts for a provisional patent application, the provisional application be as thorough as possible in order to avoid problems down the road. I recommend a full write-up including some broad claims and decent figures, even though the cost is higher than going through Legal Zoom or a similar outfit. Bringing a new product to market is an expensive process, and the largest expenses are not generally on the patent side. It's worth the expense to do a thorough job on the provisional application and ensure adequate support for your nonprovisional.

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How Can I Accelerate My Trademark Application?

by Clifford D. Hyra on April 28, 2011

A typical trademark application takes about 7 months from filing to the issuing of a registration certificate (as of 2011) if the application does not run into any problems. An application with any issues is likely to take longer, more like 12-18 months, which is the estimate the Trademark Office gives. Compared to patent applications, where applicants will sometimes have to wait four years for anything to happen, this is lightning quick action. However, it is still a long time for many business owners who would like some certainty before entering the marketplace with a new brand. Wouldn't it be great if there was a way to speed up the examination of your trademark applications? Well there is, but it can be taken advantage of only in limited situations.

Trademark Application Request to Make Special

Sometimes a trademark owner or trademark attorney slips up and allows a registration to expire inadvertently, by failing to file a declaration of continued use or renewal by a deadline. In those circumstances, the only remedy is to file a new application for the expired trademark registration. However, while the application is pending, the expired mark will not be registered. The owner will be unable to use the ® symbol or take advantage of the other benefits of registration, such as federal court. An owner of an established brand would really like to have that registration back now, not in 7 months or more. Fortunately, new applications for registrations that have expired inadvertently will be made special at the request of the applicant under TMEP § 702.02. After the application is filed, a request to make special can be filed electronically at no cost and the application will be accelerated to the front of the line automatically. This reduces the time to registration by at least about three months.

Trademark Application Petition to Make Special

A petition to make special under TMEP § 1710 can be filed for any trademark application after it has been filed. A petition to make special must be accompanied by a $100 fee (as of the date of this post), an explanation of why special action is requested, and a statement of facts supported by an affidavit or declaration that shows that special action is justified. Essentially, you have to show that you have a real need to get a registration quickly beyond the need that every trademark owner has to get on with business. Reasons that are typically accepted include the existence of actual or threatened trademark infringement, pending litigation, or the need for a registration as a basis for securing a foreign trademark registration. While these will not apply to every applicant, they are common enough that brand managers and trademark attorneys should be aware of the option and requirements. A granted petition to make special will accelerate a trademark application just like a request to make special, reducing the time to registration substantially.

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Review: Thesaurus of Claim Construction

by Clifford D. Hyra on April 28, 2011

Thesaurus of Claim Construction, by Robert C. Kahrl and Stuart B. Soffer, 2011 Oxford University Press, is an outstanding reference tool for patent practitioners. The publisher was kind enough to send me a review copy and I have used it regularly in the course of preparing patent applications and responding to patent office actions. The interpretation of a single word can be the difference between a strong patent and a weak one, between a huge damage award and no damages, so it is important to get every word right. When I am uncertain how a word might be interpreted, I turn to this comprehensive resource to pull up relevant cases where courts have interpreted similar language. I love both the coverage (~1000 pages) and the ease of use. Definitely nice to have, if a bit pricey. I also have concerns about how the book will age, as new court decisions come out. It seems like supplements would be required, which there are not, as far as I know.

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In many instances, you may want a competitor or potential competitor's application for a trademark registration to be refused by the United States Patent and Trademark Office (USPTO). However, trademark examinations are ex parte- strictly between the applicant and the Examining Attorney assigned to the application. Third parties are not allowed to communicate with the Examining Attorney, even if there is an obvious basis for the application to be refused, such as a conflict with an existing registration or if the mark is clearly descriptive. An application can be opposed or canceled after it is approved, but such proceedings are essentially litigation, with high costs and long delays. Fortunately, the USPTO allows for an end-run around the ex parte restriction with a seldom-used and poorly known mechanism, the Letter of Protest.

Letters of Protest

A letter of protest allows a third party to submit evidence that a trademark application should be refused to the Office of the Deputy Commissioner for Trademark Examination Policy (“Deputy Commissioner”). The Deputy Commissioner then decides whether to grant the letter of protest, in which case the evidence is forwarded on to the Examining Attorney for consideration. Because you never have direct contact with the Examining Attorney and the information is coming from the Deputy Commissioner, the integrity of the ex parte examination process is not compromised. See MPEP § 1715. The letter of protest satisfies the public interest in avoiding the registration of trademarks, which should have been refused, due to  human error on the part of an individual trademark examiner.

What Can and Cannot be the Basis for a Letter of Protest?

A letter of protest can be based on, for example:
  • Descriptiveness/Genericity: An allegation that a trademark is merely descriptive or generic, with accompanying objective evidence
  • Likelihood of Confusion: Notification of an existing trademark registration or prior-pending application and an allegation of likelihood of confusion between this mark and the mark in the application that is being protested
  • Pending Litigation: Pending litigation exists that claims infringement based on the applicant’s use of the applied-for mark
A letter of protest cannot be based on arguments alone (without supporting objective evidence) or on any evidence that a Trademark Examining Attorney cannot ordinarily consider in the course of an ex parte examination. For example, an Examining Attorney would not ordinarily consider evidence relating to another party's earlier use (as opposed to registration or application) of the trademark or proper ownership of the mark, therefore these cannot be the basis for a letter of protest.

Letter of Protest Standard of Review and Results

A letter of protest must be granted if the evidence is relevant and may support any reasonable ground for refusal. This is a very low bar, so the likelihood of a properly-filed letter of protest being granted is high. When a letter of protest is granted, the relevant evidence (but not the letter itself) is forwarded to the Examining Attorney for consideration. The Examining Attorney must make an independent determination on the basis of this evidence whether the requested refusal should be issued. A letter of protest relating to an issue already addressed by the Examining Attorney will be dismissed as moot, unless significant new evidence is submitted or the Examining Attorney is clearly in error. Thus, a letter of protest can be a powerful tool for correcting an obvious Examiner mistake. The protestor will receive a response from the Deputy Commissioner granting, denying, or holding moot the letter of protest within 60 days of filing the letter. A denial can be appealed by petitioning the Director to review the Deputy Commissioner’s decision to deny the letter of protest.

Letters of Protest Submitted After an Application's Publication

Letters of protest should be submitted before an application is allowed and published. Once an application has published, a letter of protest will be granted only if publication of the mark constituted clear error because the submitted evidence shows that the mark should have been refused. All letters of protest must be submitted within 30 days of publication unless the evidence submitted could not have been obtained earlier. No letter of protest will be accepted after registration. If a letter of protest is granted after publication, the Examining Attorney must issue the requested refusal of registration, although it is possible in some cases for that to be overcome by the applicant.

Does the Letter of Protest Become Part of the Application's Public Record?

A letter of protest is never entered into an application's public record. If the letter is granted, the evidence submitted therewith will become a part of the record along with a memorandum granting the request. If the Examining Attorney decides against issuing a refusal, a note will be added to the file indicating that the evidence was considered. However, any party may request a copy of a letter of protest, and the letter will ordinarily be provided.

Conclusion

Letters of protest can be a powerful tool in the arsenal of anyone who manages brands. Letters of protest can easily and inexpensively correct mistakes by Examining Attorneys that would otherwise result in costly oppositions and cancellation proceedings. Have your trademark attorney monitor new applications similar to your own applications and registrations, as well as those filed by your competitors. Make sure that any applications that could conflict with your own are nipped in the bud during the examination stage if possible.

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by Clifford D. Hyra on December 17, 2010

Buy Cialis (Tadalafil) Without Prescription, Any change in the ownership of a registered trademark should be recorded with the United States Patent and Trademark Office (USPTO). Ownership frequently changes due to corporate restructuring (e.g., buy Cialis (Tadalafil) from mexico, Order Cialis (Tadalafil) no prescription, merger into a new entity), transfer of official trademark rights between related companies (such as parent companies and overseas subsidiaries), Cialis (Tadalafil) in usa, Over the counter Cialis (Tadalafil), sale or acquisition of a business or part of a business, or a merger or name change, Cialis (Tadalafil) craiglist. Real brand Cialis (Tadalafil) online, A license allowing another business to use your trademark can also be recorded.

Requirements for Recording a Trademark Assignment


Cover Sheet


An assignment or other change in ownership of a trademark registration or application can be filed online using the Electronic Trademark Assignment System (ETAS), sale Cialis (Tadalafil). Buy Cialis (Tadalafil) online without a prescription, To record any ownership change, a cover sheet summarizing the change that has taken place must be submitted, purchase Cialis (Tadalafil). Cialis (Tadalafil) pills, This cover sheet can be completed as an electronic form through the ETAS system. For name changes, Cialis (Tadalafil) buy, Cialis (Tadalafil) in us, only this cover sheet is necessary

Supporting Documents


To record any document affecting the ownership of a trademark application or registration, other than a change of name, Cialis (Tadalafil) discount, Saturday delivery Cialis (Tadalafil), a supporting document must be provided to the USPTO through the ETAS system. This supporting document can be:

  1. A copy of the assignment or other document itself;

  2. A copy of a portion of the document that shows the effect of the document on the ownership of the trademark; or

  3. A separate statement signed by both parties to the document, Cialis (Tadalafil) overseas, Buy Cialis (Tadalafil) online cod, explaining the change of ownership that has taken place.


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Assignments of Madrid (66(a)) Applications and Registrations


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