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Topic: Final refusal? (Read 4601 times) |
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JSonnabend
Moderator
Senior Member
Posts: 2251
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Re: Final refusal?
« Reply #5 on: Dec 20th, 2007, 8:01am » |
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The examining attorney should allow the mark to register if you submit a "letter of consent" from the other party. Without reviewing recent letters of consent I've successfully submitted, I believe the letter will need to say: (i) that the parties are familiar with each other's marks, the goods/services each is used with and the relevant markets; (ii) that the parties believe, based on this knowledge, that no likelihood of confusion will ensue; and (iii) that the parties will cooperate to eliminate any confusion that does arise.
See T.M.E.P. § 1207.01(d)(viii).
- Jeff
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SonnabendLaw
Intellectual Property and Technology Law
Brooklyn, USA
718-832-8810
JSonnabend@SonnabendLaw.com
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bcapehart
Newbie
Posts: 41
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Re: Final refusal?
« Reply #6 on: Dec 20th, 2007, 12:39pm » |
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All good comments from Lyza and Jeff, and I would agree that a letter of consent would be something to strive for. A bit of caution, while the TA will look favorably on a letter of consent, he is not obligated to blindly accept it and withdraw the rejection. He must balance this letter with other likelihood of confusion factors.
You may consider having language in any agreement that takes into account the situation the TA maintains the rejection. If such event occurs, you could try to get them to agree that they would still not sue. I don't know if you could this concession, but it is a consideration.
Brent
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Brent A. Capehart
Patents, Trademarks, Copyrights
Deep in the Ozark Mountains
bcapehart@ozarklawyer.com
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mikepro1
Newbie
Posts: 34
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Re: Final refusal?
« Reply #7 on: Dec 20th, 2007, 11:08pm » |
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Thank you all for your answers. One last question.
Is it common for money to be exchanged or offered when seeking to get a letter of consent?
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JSonnabend
Moderator
Senior Member
Posts: 2251
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Re: Final refusal?
« Reply #8 on: Dec 21st, 2007, 9:15am » |
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on Dec 20th, 2007, 11:08pm, mikepro1 wrote:Thank you all for your answers. One last question.
Is it common for money to be exchanged or offered when seeking to get a letter of consent? |
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I don't know if it's common, but it certainly isn't unheard of.
- Jeff
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SonnabendLaw
Intellectual Property and Technology Law
Brooklyn, USA
718-832-8810
JSonnabend@SonnabendLaw.com
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mikepro1
Newbie
Posts: 34
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Re: Final refusal?
« Reply #9 on: Jan 2nd, 2008, 9:24pm » |
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The other party whose registration is keeping me from getting a registration recently sent me potential terms for us to co-exist. Included in this co-existing agreement is a payment amount I will have to pay.
My question is, can I use this communication of terms as a way to show the examining attorney that the other party believes we can co-exist or does the agreement have to be executed?
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