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mikepro1
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Final refusal?
« on: Dec 14th, 2007, 7:50pm »
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I have received a final refusal for an application because of "likelihood of confusion" with another registration that is close but not the same as mine.  I don't think there will be confusion but the examining attorney seems to be giving broad protection.
 
My question is, can I contact the party that owns the registration that the EA thinks is confusingly similar and get them to agree we can coexist.  What is that called?
 
Also, since a final refusal has been issued am I too late to do anything?
 
Thanks
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Lyza
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Re: Final refusal?
« Reply #1 on: Dec 16th, 2007, 12:05pm »
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Hi Mike,
 
Remember that I am not an attorney, however, the rules at the PTO state that you are allowed the usual 6 months to respond to a Final refusal as you are a non-final office action.  In addition, you are allowed to file an appeal brief and Request for Reconsideration at the TTAB at the same time that you file the response to the final refusal.  This will ask senior examiners to take a look at the junior examiner's refusal and your responses to determine if the examiner made a mistake.  In some cases, they will reverse the refusal in your favor.  
 
So don't give up.  If you think the examiner is wrong and can find case law and other existing registrations that had the same problems during examination, you may be able to overcome the refusal, or at least appeal showing the cases you found to support your position.
 
An alternative would be to approach the OP with a co-existence or concurrent use agreement.  You might appeal to the SoloIP list for some criteria but the ones I'm familiar with are that each party agree to limit their business within a certain geographical area, or that they agree not to enter each other's channels of trade.  I hope this helps.  Good luck.
 
Lyza
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Lyza L. Sandgren, President/CEO
CanopyLegal LLC
lyza2855@gmail.com
www.canopylegal.com
North Amer. Rep for WebTMS TM Mgmt System
This message should be mistaken for or construed as legal advice.
mikepro1
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Re: Final refusal?
« Reply #2 on: Dec 16th, 2007, 7:56pm »
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Thank you Lyza.  To get the other party to agree to a concurrent use or co-existence agreement, will I probably have to pay them something?
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Lyza
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Re: Final refusal?
« Reply #3 on: Dec 17th, 2007, 12:40am »
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Can't answer that.  How good are your negotiation skills?  The OP apparently has senior PTO filing rights but whose use in interstate commerce is senior?  You need to do some homework before you contact the OP.  When did they first begin using their mark?  Are they litigious, i.e. have they ever opposed or threatened to oppose someone else's use of a like or similar mark? What are their revenues?  Are they big, small, public, mom & pop?  Will your channels of trade actually cross?  Can you co-exist within the same markets?  Can you co-exist in the same geographic area?  Can you co-exist if your geographic areas of business are defined and limited?
 
I'm sure one of the attorneys will have some excellent suggestions, but you need a strategy before you contact the OP or OC.  Good luck.
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Lyza L. Sandgren, President/CEO
CanopyLegal LLC
lyza2855@gmail.com
www.canopylegal.com
North Amer. Rep for WebTMS TM Mgmt System
This message should be mistaken for or construed as legal advice.
mikepro1
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Posts: 34
Re: Final refusal?
« Reply #4 on: Dec 19th, 2007, 8:17pm »
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Thanks again Lyza.  I have contacted the other party and they seem willing to work something out for an undetermined amount of money.
 
Now, this party is the only cited mark that is barring registration for likelihood of confusion, and there is no other matter cited that will stop registration.  
 
So my question is, if I get this company to agree that there is no likelihood of confusion, they agree in writing not to file a lawsuit against our mark, and they state they believe the mark should be registered, will the Examining Attorney lift the refusal and register the mark?  Is it a guarantee, most likely, or a shot in the dark?
 
Thanks in advance.
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