Sep 27, 2019 · A common mistake is that applicants submit the wrong type of arguments in reply to a 2(d) Likelihood of Confusion Refusal. See our firm page entitled, Likelihood of Confusion Refusals, 2(d) Refusals, to review the 13 factors considered in this analysis. Below are ten critical rules for trademark applicants to keep in mind when confronted with a ...
If you are facing a likelihood of confusion rejection and need assistance in overcoming the rejection, call Roland Tong, at 949-298-6867 or email Mr. Tong at [email protected]. Mr. Tong has been obtaining trademark registrations for his clients since 2001. He has represented a wide range of clients from start-up companies to Fortune 500 ...
If you received a 2 (d) refusal, then the Examining Attorney believed that the cited marks are confusingly similar and are for related goods and services. Once the Office Action is sent by the U.S. government, you have six-months to respond address all of the issues in the Office Action or your application will be abandoned.
Trademark infringement is one of the most serious allegations against a technology startup, entrepreneurs, or small business when choosing filing for registration of a new trademark, brand, or logo, with or without a trademark attorney.If a brand or trademark is deemed to potentially constitute trademark infringement because it is likely to cause confusion, the United States …
Don’t worry, receiving an Office Action does not mean that your application has been denied, rather that the USPTO needs more information or there were problems with your initial filing. There are many reasons that trademark applications are refused, but one of the most common is “likelihood of confusion.”.
Likelihood of confusion” is a specific term that means something different to trademark attorneys than the dictionary definitions of “likelihood” and “confusion.”. The term comes from the way that the USPTO and courts have interpreted Section 2 (d) of the Trademark Act.
The 13 DuPont factors are: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. (2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use. ...
First, carefully read the legal analysis by the government attorney after “Refusal under Section 2 (d) – Likelihood of Confusion with a Registered Mark.” Did the government attorney reject all of your goods and services, or just some? Did he or she give any specific reasoning for why it thought the marks would be confusing? Take note of all of those specific arguments, because there is a process for appealing the refusal of the trademark to counter the arguments made by the Examining Attorney..
Next, look up the Cited Registration (what we will call the other trademark registration that the USPTO attorney found problematic) in the USPTO’s TSDR database, at http://tsdr.uspto.gov/.
Next, look at the goods and services (#1-3, above) of the Cited Registration, along with the alleged “First Use in Commerce date.”
It can be a tough call as to whether trademarks are confusingly similar, but generally, the Examining Attorney will look at whether they are similar in sight, sound, and meaning for related goods and services.
As you can see by the scope of issues discussed in this article, overcoming a Section 2 (d) Office Action can be complicated, and, there are many paths to explore.
The U.S. Patent and Trademark Office (“USPTO”) may refuse to register an applicant’s mark for several reasons. One possible basis for refusal is a rejection based on likelihood of confusion. 1. Likelihood of Confusion. USPTO Examiners examine each application for federal trademark registration to determine whether it complies with ...
USPTO Examiners examine each application for federal trademark registration to determine whether it complies with the requirements for trademark registration. One of the requirements is that the proposed mark must not conflict or pose a likelihood of confusion with any prior mark.
If you are facing a likelihood of confusion rejection and need assistance in overcoming the rejection, call Roland Tong, at 949-298-6867 or email Mr. Tong at [email protected]. Mr. Tong has been obtaining trademark registrations for his clients since 2001.
A consent agreement is an agreement between the owner of a prior registered mark and the applicant where the prior registrant allows the applicant to use and/or register their same or similar mark. When an applicant submits a consent agreement in response to an Office Action, the Examiner will consider the agreement in conjunction with ...
Once the Office Action is sent by the U.S. government, you have six-months to respond address all of the issues in the Office Action or your application will be abandoned. However, you have a few options and the best one will be determined by a lot of different factors. Let’s go over the potential options.
Josh Gerben, Esq. is the founder and principal of Gerben Law Firm. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 5,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.
This blog discusses how to respond to a USPTO ( United States Patent and Trademark Office) “office action letter” which you may need to do to fight to register your service mark or your trademark.
A service mark describes, distinguishes or identifies “services” that a company provides. The “trademark” is used for “goods” or products (ex. a downloadable movie).
A trademark applicant only has six months from the time of receiving an office action letter (measured by the date the letter was mailed/issued to you), so it is important to seek the assistance of a federal trademark lawyer if you need help with responding to these letters.
Yes. Here is sample language you might find in this type of circumstance where another company “beat you to the trademark office.”
Here is another possible grounds for holding up the registration of your trademark:
Another very common grounds to refuse to register a trademark is that part of the name you are trying to get a trademark for contains “descriptive” material that cannot be protected. For example trying to get a trademark for “Phil's Software Company” may result in denial because “Software Company” is an name that just describes what you do (i.e.
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