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Author Topic: Trying to understand how I got a trademark approved so I can renew.  (Read 501 times)


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I applied for a trademark in 2010. It was rejected based on "similarity" to 3 marks, and they did not like the proof of use in commerce.

My reply to the office action resulted in:

* They rejected the new proof
* 2/3 of the similarity claims being dropped
* 1/3 remaining similarity rejections were kept, placing the application into suspension.

I didn't bother replying to this, because the 1/3 rejection was for an "intent to use" application to that had been filing for extensions for years. I figured they would either give up or I would have enough money to hire a good trademark lawyer in the future, so no response was best.

I changed my personal address a few times, and somehow didn't update this particular application with the USPTO (since corrected).  I learned a month ago that it was granted when I started getting spams from attorneys who want to process the renewal for me.

Looking at the Prosecution History, it appears the following happened:

1. It was assigned to the LIE 6 months after the Notification of Suspension
2. Every 5-7 months someone in the LIE checked
3. The blocking application abandoned
4. The next check triggered "ASSIGNED TO EXAMINER" then a month later "LIE CHECKED SUSP - TO ATTY FOR ACTION".

I totally missed the "NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED" message. It looks like it arrived when I was traveling and I just glossed over it.  I moved, so I never got the mailed paper notice or anything like that.  Then i just got renewal spam, looked it up on the USPTO, and wow - it went through.

That brings me to this question/concern:

The last Office Action rejected the specimens stating:

The web page specimen is not acceptable to show trademark use as a display associated with downloadable software because it fails to provide sufficient information to enable the user to download or purchase the software from the website. Thus, the web page appears to be mere advertising material and is not acceptable to show use in commerce for goods. See In re Osterberg, 83 USPQ2d 1220, 1222-24 (TTAB 2007); In re Settec Inc., 80 USPQ2d 1185, 1190 (TTAB 2006); In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006); TMEP 904.03(e), (i); cf. In re Dell Inc., 71 USPQ2d 1725, 1727-29 (TTAB 2004).

Does anyone know if the criteria had changed? Or maybe they shouldn't have issued with the specimens they had?

Keeping things vague so they are applicable to a wide audience:

* The trademark is for a technology startup's brand name, and was registered under Class 9.
* The description covers "Computer software for ____; and computer software platforms for ____."
* At the time it was filed: the company did not offer "downloadable software" for sale, the company offered B2C customers a free online tool, and was selling B2B customers advanced integration software.  The images were screencaps of the actual B2C tool (computer software platform), and the sales page for the B2B tool (computer software).  The product is basically a branded technology that allows one websites operator to integrate/embed the features/functionalities of one or more other websites.

If there are better recommended specimens for this, which I can provide on the renewal, I would be grateful.

I am obviously not a lawyer. I based this application and the class/description on 5 other similar applications I had previously filed with lawyers at other companies - and all went through without a hiccup.  This company is a passion project that has been losing money, so i can't bring in my lawyers :(

Robert T Nicholson

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First, be aware that the trademark office does make mistakes. 

However, here's what I think they are asking for:

A page that clearly uses the logo as an identifier for the product (the B2C tool), and clearly allows the user to download or order the product.

Sometimes, rather than arguing, it's best to just submit a new specimen showing exactly what they are asking for.
This post is provided for information purposes only, and does not constitute legal advice.

Robert Nicholson Consulting | Copyright Safeguard | ED Treatment Center


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A page that clearly uses the logo as an identifier for the product (the B2C tool), and clearly allows the user to download or order the product.

Thanks for the quick reply.

I do think that is what they were asking for, the problem is that it doesn't exist.  That's why i wonder how this went to issue, as the rejection over a specimen wasn't responded to.

No consumer can download or install a B2C tool - consumer installable software doesn't exist.  The B2C stuff is essentially used "in the cloud" (computer software platform) and someone can sign up for it.  It should probably be re-trademarked as a service under #38.  The B2B stuff doesn't have a packaged product or installer.  Perhaps I should just create a downloadable product.

Digging into this deeper, it seems that if the trademarked name is in the title-bar of the webpage, that is an allowable usage. I'm wondering if the examiner realized that, and then removed the rejection.


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After some thought and reading the application/notes, it appears it would be best to expand the registration to cover an additional service class under section 38.  It looks like the registration tried to sneak in providing services under the software, which a lawyer had managed to sneak in with another examiner at a corporate job.

Can someone point me to a reference on the best way to proceed on adding a class to a mark?

From what I've read, this should qualify as within the scope of the original application's claims as the original application noted services:

   Computer software for providing ___ services and the enabling of ____ services in 3rd party software;
   Computer software platforms for providing ___ services and the enabling of ____ services in 3rd party software.

The examiner required a limitation, and we agreed on

    Computer software for ___, namely X, Y; Computer software platforms for ___, namely X, Y.

In retrospect, i should have claimed X, Y, Z.  Sigh.


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