Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[bluebeard96]

OK guys, this will be a little vague because of the large players involved, but I will try to make it as clear as possible.

An associate of mine filed a trademark early this year.  The USPTO accepted the mark and told us to proceed with production etc.  Although not in writing, the examining attorney told us she was amazed that another party hadn't picked up the trademark phrase, considering its popularity, but that there were clearly no prior filing and that the mark "was ours."

After months without issue, the USPTO has now come back to us and refused registration, stating that our mark falsely connects to another institution under Section 2(a).  The USPTO claims that the mark is so popular that it constitutes the identity of the institution.  We disagree with this for several reasons.  Firstly, if the mark constituted this institution's identity, we wouldn't have been able to strike licensing deals with completely unrelated parties (one is a deal with an entire state that pairs our phrase with their state logos).  Also, I found a document online that says that claims under section 2(a) have to be brought by the institution we are purportedly "falsely connecting" to, not by the USPTO (Heroes Inc. v. Boomer Esiason Hero's Foundation Inc found at http://www.ipcounselors.com/19970728.htm).  Do you guys have any thoughts on this?

Unfortunately our budget is not very large and feel that this other party will just throw money at it till we get bled out, but we sincerely feel and have already shown that this mark goes far beyond the "institution" (who hadn't registered the mark before).

And, coincidentally, two days later the institution filed for the same mark under the same category of goods and services and sent us a C&D.  The institution had previously known what our mark was and contacted us before with no C&D ever mentioned.  Just seems odd to me that the USPTO brings forth this action and two days later we get a C&D, when the instutution knew about us 6 months ago and the USPTO was already aware of percieved connection.

Any friendly advice as to the best methods for fighting a false connection claim? We will surely end up getting a lawyer, but I'd like to do as much research as possible beforehand.  Also, we still have 5 months to respond to the USPTO's refusal action.  Is the institution allowed to proceed with producing goods under that same mark when we haven't had a final refusal filed against us? (We do not have it fully registered (r) yet either though :-/ )

Mike

[Isaac]

I don't have any specific advice for you about the merits of the PTO's office action, but the two arguments you present don't look like winners.  The court's statement that only the involved institution can bring a false connection challenge is not going to apply to the USPTO making a decision whether to register the mark.  The PTO is authorized to refuse registration under section 2(a) of 15 USC 1052 which covers a lot more than just false connection.

Further the PTO is not going to care that some unknown third party does not see a problem if the PTO does find a problem.

Your registration attempts would not prevent someone from using the mark on goods.  It is not necessary to register a mark to use it as a trademark, and in any event even a successful registration would not put you in position to make a senior user of a mark cease and desist within the geographic region in which he has established use.

At this point, I'd suggest that you need some professional help with your registration.

[JSonnabend]

Although not in writing, the examining attorney told us she was amazed that another party hadn't picked up the trademark phrase, considering its popularity, but that there were clearly no prior filing and that the mark "was ours."

Mike -

With all due respect, the above quoted language shows, I believe, a bit of a misunderstanding of the tm registration process on your part.  The examiner, without doubt, did not say the mark was yours.  She may have indicated that she would allow the application to publish for opposition, but that's all she can do.  No registration ever makes a mark yours -- it merely registers a mark that appears to be yours.

On top of that, if a mark is "popular", then it is a weak mark.  Indeed, to the extent that the examiner expressed surprise because the mark is "popular", she was likely hinting to you the same thought.

Finally, even if you made it through opposition and received your registration, that doesn't mean (a) that you're free to use the mark, or (b) that some third party can't seek cancellation of your registration.

If your mark is important to you, I urge you to speak directly with a tm attorney.  No amount of generalized discussion here will help you solve your dilemma.

- Jeff

[bluebeard96]

Thanks for the replies.  My partner and I have contacted a TM attorney (as we planned to do all along) to help us along the process.

Regarding being the "senior user" of the mark: We are in an interesting scenario where the institution has not used/marketed the mark in question.  3rd parties have used the saying in discussions about the institution, but to our knowledge the mark was never used in and marketing/goods/etc.  The saying was created by a 3rd party (not the institution).  Difficult to understand without using the actual mark, but I just can't disclose that right now.

Regarding the mark "being ours" The examining attorney DID, indeed, say the mark "was ours", but we are fully aware that is has to go through publication, challenges, etc.  What concerns me was how the examining attorney performed the review, acknowledged that there was some connection (which we don't deny - we disagree with the level of connection), and said that our application to register was good to proceed and that we should produce and distribute our products.  She said she didn't foresee any problems with the application, as there were no filings for the mark previously.  I know there are obviously other things that can occur to stop the application process, but it doesn't seem fair that the USPTO can acknowledge a connection, then say we can proceed, then go back and say there's a connection so we can't proceed!  It's really frustrating.

Is it normal for the USPTO to re-examine an application when there has been no publication nor opposition filed against the application?

That's the last question I'll ask.  I don't want to waste any of your valuable time considering we have started discussion with a local TM attorney (partner did it last week).

[Isaac]

What I would have expected to happen during the process is that you would get office actions in writing informing you of the status of the examination.  Did you receive a favorable office action followed by a negative one?

[Guest]

<<What concerns me was how the examining attorney performed the review, acknowledged that there was some connection (which we don't deny - we disagree with the level of connection), and said that our application to register was good to proceed and that we should produce and distribute our products.>>

I have experienced, on more than one occasion, situations where an examining attorney approved a mark for publication only to have the application pulled during the final review prior to publication and an office action generated raising a new reason for refusal.

The bottom line is the examining attorney's work is reviewed and if an error is found, the application can be reevaluated and refused registration on whatever grounds the PTO deems applicable.

I'm also surprised by your statement that the examining attorney advised with respect to the production and distribution aspect of your business -- are you sure you didnt misunderstand?  Perhaps he/she was explaining ways to fulfill the requirement to use the mark in commerce before a registration can issue.  

Nonetheless, as others have already accurately stated - it would be to your advantage to seek the advice of competent counsel immediately.