Hi Michelle,
I am not an attorney but assist attorneys across the US in the processes and procedures of trademark prosecution before the USPTO and in foreign jurisdictions.
A 2(d) refusal is arguably the most difficult refusal to overcome, even for attorneys. Usually, case law from similar refusals needs to be provided that will support your counter-arguments to successfully overcome the examiner's refusal. Dictionary descriptions are NEVER enough or a good foundation for a response.
Attorneys and law firms usually have resources at their disposal, such as Westlaw, CT Corsearch, a McCarthy's subscription, that non-legal professionals cannot obtain or afford even if available to support their research. Without those resources, and using only the hand searching suggested by Jeff, who is trying to be helpful in the manner you requested, your chances of locating those relevant cases and prevailing in a response are slim to none. The phrase, "needle in a haystack" comes to mind, and once you begin trying to locate the cases in the TDR, you will understand what I am saying.
More importantly, and as a business owner myself, I understand that your brand is your business and therefore one of the single most important assets, if not THE most important asset, that must be protected - protected in a manner that isn't based solely on luck.
I also understand that your funds may be limited, but what is YOUR time worth? If you were to spend a total of 6-24 hours searching for supportive case law, what would that be worth in lost sales revenues because you weren't out selling your products or services? An attorney or their support staff might take an hour to amass the same results. To go further, would you perform surgery on yourself after spending a few hours at a medical library because you felt the surgeon's fees are too high? Of course not.
In addition, if you have based your decision not to use counsel only on a discussion with a single attorney, or worse, the perception that an attorney will be more expensive than you can afford rather than an actual quote, I urge you to talk to a qualified trademark attorney or additional attorneys regarding actual charges as you may be surprised. Trademark prosecution is a federal practice so you may hire someone from any state in the union. I would wager that it will be far wiser and cost effective to retain an attorney for this response than it will be to waste your own time and very probably risk losing the federal protection of your brand.
Good luck to you, whatever your decision.
Lyza
Author
Topic: Non Final Office Action (Read 1384 times)
