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Author Topic: Trademark - change specification in current application, or refile?  (Read 765 times)

G8ZoST

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I'm currently trying to register a trademark for the company I work for. I've gotten a first office action with a rejection based on the trademark being considered as merely descriptive. I think with the current state of the specification it's hard to argue against that. This rests mainly on an unfortunate wording of the specification for the goods and services in question, i.e. one of the two terms the trademark consists of is used directly, while a close version of the other appears. (My bad, I should have done more research before filing.)

Now I do feel that I can define the goods and services more closely, and in doing so eliminate both terms from the specification. This would also mean a substantial narrowing of the scope, so I don't think it's an attempt at trickery.
If I do this within the current application, what are the chances that the examiner will see this as just an attempt at sly manouvering?

Are the chances better if I abandon now and file again with the changed specification? What are the chances here that this will be assigned to another examiner who'll look at it with a fresh perspecive?
« Last Edit: 06-24-11 at 07:10 am by G8ZoST »
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Superchicken

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I'm sure the moderator will include his view here.  Personally, I would not abandon my application without making every effort to correct the current application.  I don't have the benefit of seeing your office action, but I would say that certainly, you can attempt to narrow (not substantively change) your description and try to explain your position to the examining attorney.  At this stage, your application will not be assigned to another examining attorney.  The trademark examining attorneys are not dumb so I wouldn't attempt to "trick" them.  Every examining attorney is different one could see trickery and another would not.  Sometimes a legal argument is the approach to take and often, a common sense response is the approach to take.   

If you are not a lawyer, I would recommend that at this stage you consult with a lawyer.  Some of what you describe doesn't quite sound right, but I'm sure a read of your office action would clarify things.  A lawyer will be able to properly interpret the requirements of your office action and know best what approach to take.  It's possible that the supplemental register may be an option as well -- an attorney can best set forth all your options.
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T. Wells
Wells Law
Intellectual Property | Business | Entertainment 
www.thewellslawfirm.com

*No attorney-client relationship exists by my comments above.  No atty-client relationship unless signed retainer between lawyer and client

G8ZoST

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Thanks for the answer. Sorry about being a bit unclear in describing the situation

To clarify: The trademark applied for is a combined word mark, A + B. B appears directly in the specification, as part of the description of what type of objects our service handles. A is a commonly used abbreviation for another word appearing in that description. The combination is not original enough to argue against descriptiveness.

The possible change would be to both more narrowly define the objects, and from a different angle. A would then no longer be directly associated with the objects. Regarding B, a rewording would effectively be cosmetic.
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JSonnabend

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I think Tracy is right on the nose.  At this point, it makes good sense to speak to a TM attorney.  You might need to refile, but perhaps not.  A qualified TM attorney will be able to tell you that.

- Jeff
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SonnabendLaw
Intellectual Property and Technology Law
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