Acquiring Licensing and Exploiting Trademark Rights

38 questions on acquiring licensing and exploiting trademark rights, answered and cited by the UpLaw editorial team.

• Can I accidentally create a franchise by licensing my trademark?
• Can I assign an intent-to-use application before I've used the mark?
• Can I sell my trademark by itself, or must the sale include something more?
• Can licensing my trademark expose me to product-liability claims?
• Can the USPTO refuse a trademark for being immoral, scandalous, or disparaging?
• Does federal registration create trademark rights, or just confirm them?
• Do I have to register a trademark to have rights in the United States?
• Do I need a lawyer to file a U.S. trademark application?
• How do I protect my trademark in other countries?
• How do I use a trademark as loan collateral?
• How do the 45 Nice classes affect the cost and scope of a trademark application?
• How long does a federal trademark registration last, and what must I file to keep it?
• How long do I have to respond to a USPTO Office Action?
• How much quality control must a trademark licensor actually exercise?
• Is it a mistake to choose a descriptive brand name?
• What are common law trademark rights, and how far do they reach?
• What are my options if a clearance search turns up a conflicting mark?
• What are the filing bases for a U.S. trademark application?
• What are the most common grounds for a USPTO trademark refusal?
• What benefits does registration on the Principal Register provide?
• What does a state trademark registration give you?
• What is an intent-to-use trademark application, and what advantage does it give?
• What is a Notice of Allowance, and what must I do after receiving one?
• What is a trademark clearance search, and why run one before launch?
• What is a trademark specimen, and what makes one acceptable?
• What is genericide, and how do I keep from losing my mark to it?
• What is “naked licensing,” and why is it so dangerous?
• What is the difference between a first-to-use and a first-to-file trademark system?
• What is the difference between a standard character mark and a design mark?
• What is the difference between the Principal and Supplemental Registers?
• What is the Madrid Protocol, and what is “central attack”?
• What is the quality-control requirement in trademark licensing?
• What is trademark abandonment through nonuse?
• What is trademark incontestability, and how do I get it?
• What makes a trademark legally strong or weak?
• Who can oppose my trademark application, and when?
• Who wins when two businesses claim rights in the same trademark?
• Why is monitoring a pending trademark application so important?