Associate Amanda Mergel Joins W.R. Samuels Law

W.R. Samuels Law is pleased to announce that Amanda Mergel, esq., has joined the firm starting earlier this February. Amanda Mergel brings a rich background to the firm, including experience in fashion, music, and entertainment law.  Even more, Ms. Mergel served as a legal fellow at Volunteer Lawyers for the Arts where she advised artists and arts-related nonprofit and for-profit organizations.  She also gained in-house experience during law school with the legal departments at L’Oreal USA, Wilhelmina Models, and Viacom.

Ms. Mergel is admitted to practice in New York and New Jersey.


Bill Samuels Named Top 40 Under 40

In addition to being named a New York Metro Super Lawyer Rising Star for 2013, firm founder Bill Samuels was recently named one of the Top 40 Under 40 IP lawyers in New York for 2014 by the American Society of Legal Advocates (ASLA).  ASLA is an invitation-only organization that through its vetting process ultimately selects less than 1.5% of lawyers nationally.

Learn more at http://www.societyoflegaladvocates.org/ and http://www.superlawyers.com


Supplemental Register: No Publication, So Then What?

For those who have filed for a US federal trademark registration, you know that once your application has been approved by the Examining Attorney it is then published for opposition by any party that thinks it would be injured by registration of your mark.  The opposition period lasts 30 days and it gives trademark rights holders an opportunity to protect against registration of a mark that might narrow the breadth of their rights.

But what about the Supplemental Register?  Marks that don’t qualify for a full registration because they are descriptive or lack some level of distinctiveness can register on the Supplemental Register.  So, registration of a such mark on the Supplemental Register is a good option for the applicant as it allows for use of the “®” when the mark is used with the products or services listed in the registration.  There are other upsides, plus amendment to the Supplemental Register is not an admission that the mark is not distinctive.

So what if someone registers a confusingly similar mark on the Supplemental Register without giving you the chance to oppose that registration?  Well, if a third party objects to an application for the Supplemental Register, it must attempt to cancel the registration after it issues.  From there it is up to the Trademark Trial and Appeal Board to determine whether the mark remains registered or it is cancelled.

That’s your option: file a cancellation and lay out the basis for taking the mark off the Supplemental Register.



Govt. Shut Down, USPTO Open for Business

With all the attention being paid to the US government shutdown, there are a number of agencies still operating and the USPTO is one of them.  It’s business as usual: keep apprised of deadlines and work to secure priority for your filings.

Surely there will be more to come and few are sure what tomorrow will bring…But for now the USPTO is open for business.


| 1 Comment

Founder Bill Samuels Named Super Lawyers: NY Metro Rising Star

Today Bill Samuels was named a Super Lawyers: NY Metro Rising Star.  Super Lawyers recognizes the top lawyers in the New York Metro area.  Attorneys are selected via peer nomination, independent research and peer evaluation.  While up to five percent of the lawyers in a state are named to Super Lawyers, no more than 2.5 percent are named to the Rising Stars list.

In April 2013, the Super Lawyers selection process received a patent (U.S. Pat. No. 8,412,564) from The United States Patent and Trademark Office, demonstrating credibility as an impartial third-party rating system.

For more information, see: http://www.superlawyers.com/new-york-metro/lawyer/William-Samuels/cd1af412-0810-4ff0-a94b-81a81f551882.html


Design Patents in a Nutshell

Design patents protect the ornamental design of a functional item.  While there is certainly some overlap in the types of protection one can use to protect such ornamentation, design patent protection can cover an array of subject matter, including jewelry, containers, computer icons, packaging, electronics, fonts, and the list goes on…

To qualify for design patent protection, the design must be new, original, and ornamental.  In turn, that protection prevents any third party from making, using, or importing into the United States a product with a design that is substantially similar to the design claimed in a design patent.

There’s more to it, but the first step is to identify the issues and determine if design patent protection is a viable option.  It’s a great option to keep in mind.


Phones Back Up

For anyone trying to reach us by phone yesterday, our phones were down but they are back up again.  Apologies for any inconvenience.  Please always feel free to reach out via e-mail.  Thanks!


Multi-Class US Intent-to-Use Applications & Statements of Use

Have a US trademark application that has been granted a Notice of Allowance in multiple classes but you’re not using in all of the classes? Want a registration in the classes where you have use?

In this type of situation, you can split out the class(es) of goods where you don’t have use by filing a “Request to Divide.” Then, upon dividing out the classes without use, for the classes where you do file the Statement of Use the USPTO will issue a registration. The remaining class(es) of goods that were divided out will have been assigned a new serial number, separate from the “parent” application. Down the road when you have use with the goods/services covered in the new application, you can file another Statement of Use and a separate registration will issue for those classes.

So, rather than an updated registration, you would have two registration certificates covering the mark in the respective classes.