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[patentlyconfused]

Hi All,

I received a non-final office action and received a rejection on likelihood of confusion. The application the examiner makes reference to was filed before my application but I was first to use the mark in commerce. How does one prove first use in commerce to overcome a non-final office action? Thanks!

[JSonnabend]

The examiner does not have the authority to make that determination.  You will either have to (a) contact the senior applicant and convince it to drop its application and/or enter into a consent agreement; or (b) file an opposition at the appropriate time.

Bear in mind that if your date of first use is after the senior applicant's filing date, your use will be considered junior.

You can argue the merits of the 2(d) refusal directly to the examiner (i.e., argue that the examiner's conclusion is wrong).

- Jeff

[patentlyconfused]

Thanks for the advice. It's actually too late to file for opposition as the application has been registered for some time now. We will respond to the likelihood of confusion argument and then file for a cancellation in the near future.
Could anyone suggest a counter argument to Examining Attorney's statement that states that the Applicant did not list any limitation regarding channels of trade and therefore it is assumed that Registrant's and Applicant's goods are sold everywhere that is normal for such items. Any good cases on point that suggest that mere product placement in similar locations is not enough to confuse consumers? I know it's difficult to point to a specific case since each case is fact specific but I was merely just looking for suggestions?

If an Examining Attorney is requesting a disclaimer but I argue against the disclaimer should I argue the term has developed a secondary meaning and it's suggestive or should I stick with one argument?

[LoveOfIP]

You'll probably need to get the cancellation proceeding going forward now, then the USPTO can place your application into suspension while the TTAB proceeding is pending. Don't see how you can get around that office action otherwise as they will most likely just issue a final office action next.

[Yak]

Could anyone suggest a counter argument to Examining Attorney's statement that states that the Applicant did not list any limitation regarding channels of trade and therefore it is assumed that Registrant's and Applicant's goods are sold everywhere that is normal for such items. Any good cases on point that suggest that mere product placement in similar locations is not enough to confuse consumers? I know it's difficult to point to a specific case since each case is fact specific but I was merely just looking for suggestions?

I have never had any success with an argument like this.  One particular instance, the two marks were similar and covered similar types of goods; however, the marks were both for specialty products which would rarely if ever be sold in the same types of stores, websites, or channel of trade.  That argument was rejected by examining attorney as the channel of trade argument from the PTO perspective appears to be very broad.  I had no specific case law to support my side of this.

[chugan]

Hi All,

I received a non-final office action and received a rejection on likelihood of confusion. The application the examiner makes reference to was filed before my application but I was first to use the mark in commerce. How does one prove first use in commerce to overcome a non-final office action? Thanks!

I agree with IP-Geek...the prior registration will have to be cancelled unless you can get a concurrent use approved.

On the other hand, don't forget your common law rights.

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