Chris Rourk Quoted on Trademark Applications and Registration Amendments


Chris spoke about the potential issues that come along with the translation requirement by the US Patent and Trademark Office. He said that in cases where a foreign language mark could potentially be misconstrued , the foreign language should be avoided.

“It is also possible that even an English translation could have an unintended meaning, in which case it would be better to use a different approach for developing brand recognition in the US.”

Chris was also quoted in another article in this issue titled “A Change of Mark Specification,” on amendments to the identification of goods or services in registrations and requirements in the US Patent and Trademark Office.

“First, amendments are only permitted post-registration via a petition to the Director. Moreover, the amendments must relate to the goods or services for which the registrant can no longer show use due to evolving technology. The amendment must also replace the existing goods or services for which use can no longer be shown with the goods or services in their evolved form – if the registrant continues to use the mark with the goods or services in their original form, a new trademark application must be filed to seek registration for the evolved goods or services.”

Chris has extensive experience in helping clients protect their intellectual property in diverse technology fields, including the semiconductor, software and telecom fields. He has prepared and filed more than 600 patent applications, has prosecuted in excess of 300 patents to issuance, and manages client domestic and international patent and trademark portfolios. He has also assisted with numerous intellectual property transactional matters, including licensing, mergers and acquisitions, funding transactions, and joint ventures. Chris’ experience includes preparing and responding to cease and desist letters, preparing non-infringement and invalidity opinions, and assisting with patent, trademark, copyright and trade secret litigation in the software, semiconductor and telecom fields. He received his B.S.E.E., cum laude, from the University of Florida, his M.Eng., from the Rensselaer Polytechnic Institute, and his J.D., cum laude, from Georgetown University Law Center.