Deck 5: Post-Registration Procedures Trademark Maintenance and Transfer of Rights to Marks

Question 1

Discuss the effect on a mark if no renewal documents are filed to maintain it.

Answer 1

Although the registration for the mark will be cancelled if the registration is not renewed, its owner may continue to use the mark and retains all common law rights in the mark.​

Question 2

Only marks registered on the Principal Register can become incontestable.

Answer 2

True

Question 3

​A pending intent-to-use application may be assigned to another so long as there is valuable consideration.

Answer 3

False

Question 4

If a trademark is not in use, its owner may present evidence to the USPTO that its nonuse was excusable.

Question 5

Abandonment of a mark causes a loss of all rights to a trademark.

Question 6

​If a trademark owner files a petition in bankruptcy, its trademarks are generally considered the property of the bankrupt estate and may be sold to satisfy the bankrupt trademark owner's debts.

Question 7

If a trademark is assigned, the assignment must be recorded at the USPTO.

Question 8

A trademark owner has an absolute right to prohibit any and all uses of its marks.

Question 9

​ Briefly describe the advantage to a registrant of filing an affidavit of incontestability.

Question 10

Assume that a mark is registered in I.C. 1, 2, and 3. The Declaration of Use for the mark shows use in I.C. 1 and 2. What happens with respect to the mark for I.C. 3?

Question 11

​ After five years of continuous use of a mark, its owner may file a[n] ______ to preclude various challenges to the mark.

Question 12

If there is any change in a mark after it is registered, the USPTO will not accept a Declaration of Use for the mark and will insist that a new trademark application be filed for this new mark.

Question 13

What is a grace period?

Question 14

What is the danger to a trademark owner if consumers use the mark as follows: "I'll be getting a Starbucks this afternoon after work."

Question 15

​ Trademark license agreements may be written or oral.

Question 16

Assume that a trademark is registered December 1, 2016. Identify the names of all documents and give all dates to maintain the registration in force.

Question 17

Registrant ABC Inc. changes its corporate name to XYZ Corp. Why should the USPTO be informed of this name change?

Question 18

Nonuse of a mark for __________ is prima facie evidence of abandonment.

Question 19

If a trademark owner does not file an affidavit of incontestability for its mark after five years of use, the registration for the mark will be cancelled.

Question 20

​A specimen showing use of the mark is not required to renew a  trademark registration.

Question 21

XYZ is a yacht maker and has not sold a yacht under its mark SAILSHIP in three years (which is often typical in this industry). Would such nonuse of the mark be an abandonment of the mark? Discuss.

Question 22

Any trademark assignment must recite that the ______ symbolized by the mark is assigned with it.

Question 23

Why should one record an assignment at the USPTO?

Question 24

Why do parties to license agreements typically not record the agreements with the USPTO?

Question 25

When a trademark owner allows another to use its marks, such an arrangement is called a ______.

Question 26

ABC has not used its mark for a few years because consumers prefer a different product offered by a competitor of ABC. Discuss whether this is excusable nonuse such that the USPTO would accept a Declaration of Use/Nonuse for the mark.

Question 27

What does it mean to say that a trademark license is "naked," and what is the effect of a naked license?

Question 28

Periodic fees paid by licensees to use another party's trademarks are called ______.

Question 29

What is the difference between an exclusive and a nonexclusive license?

Question 30

When would a party pledge its trademarks as collateral?

Question 31

Why are intent-to-use trademark applications seldom assignable?

Question 32

What does it mean to say a trademark has been assigned "in gross"? What is the effect of such an assignment?