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Author Topic: Attorney Used Trademarked Term in my Application, Denied  (Read 663 times)

TrademarkMoGal

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Hello, attorney used the term "onesie" in my application and that was the sole reason for denial. She now has to submit a response, but she is charging me $500 to do so, but I believe this charge should not fall on me.

Though I used the term "onesie" in our discussion of items, I am not an attorney and did not know it was a trademark term and through my understanding (her explanation), she is required to look up the Trademark Office's exact naming of particular items.

It is my belief that I hired a trademark attorney to pay money to, to make sure this was done correctly. Being that I am not an expert and she is a long-standing trademark attorney in her seventies, she would have known better... especially since she mentioned how particular they are, and how they require strict detail and specific wording when it comes to clothing, that will  make or break an application. I believe the burden shouldn't fall on me to pay her fees. Am I being rational?

She is acting as if I am trying to get work for free, but I myself I am a contractor and I believe in payng for a person's work... And accidents happen, but I am an entrepreneur and do not have the extra money to pay for someone else's error.  :-\

Please let me know if the error is mine.

Thank you.
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midwestengineer

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Re: Attorney Used Trademarked Term in my Application, Denied
« Reply #1 on: 03-22-18 at 12:43 pm »

Hello, attorney used the term "onesie" in my application and that was the sole reason for denial. She now has to submit a response, but she is charging me $500 to do so, but I believe this charge should not fall on me.

Though I used the term "onesie" in our discussion of items, I am not an attorney and did not know it was a trademark term and through my understanding (her explanation), she is required to look up the Trademark Office's exact naming of particular items.

It is my belief that I hired a trademark attorney to pay money to, to make sure this was done correctly. Being that I am not an expert and she is a long-standing trademark attorney in her seventies, she would have known better... especially since she mentioned how particular they are, and how they require strict detail and specific wording when it comes to clothing, that will  make or break an application. I believe the burden shouldn't fall on me to pay her fees. Am I being rational?

She is acting as if I am trying to get work for free, but I myself I am a contractor and I believe in payng for a person's work... And accidents happen, but I am an entrepreneur and do not have the extra money to pay for someone else's error.  :-\

Please let me know if the error is mine.

Thank you.

This question mostly turns on the agreement that you have with your attorney regarding fees.  For example, some attorneys charge a flat rate for a specific scope of work while other attorneys will simply charge you hourly.  These different business models allocate risk differently between the parties.  Typically large, repeat clients are given flat rate agreements while one off clients are given hourly fee rate agreements.  For one off clients, there is just to much variability to reasonably estimate an average cost.

If you have a flat fee arrangement, carefully review the scope of work that your attorney agreed to perform for the flat fee and hold your attorney to that scope of work.  If you have a flat fee arrangement, then the risk was allocated to the attorney.

In contrast, if you have an hourly fee agreement the presumption is that you will pay your attorney hourly for all of their work.  If you are unhappy with the attorney's work, you can terminate your relationship with that attorney and contract with a different attorney.  If you have an hourly rate fee arrangement, then the risk was allocated to the client.

Your attorney might not have well explained the fee structure to you.  This is a not uncommon problem.

Now, turning to your issue, in every legal transaction there is some risk that it may not go as planned.  In this case, it appears that things didn't go exactly as planned.  This is a common issue with the legal system because it is an evolving set of rules.  Between when your application was filed and it was examined, the rules may have changed.  Your attorney may have drafted the application perfectly at the time of filing but because of the changing rules of the system, it might have been rejected in a manner that was unpredictable at the time your application was filed.  In such scenarios, there would not be any fault on the part of the attorney.

Lastly, when prosecuting a trademark it is very common for multiple office actions (I believe you are calling these denials) to be issued.  Responses to office actions must be drafted/filed for your trademark to be registered.  Typically, an attorney would let a client know that office actions are likely to be issued and that there will be a cost associated with drafting/filing a response to each of the office actions.
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Robert K S

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Re: Attorney Used Trademarked Term in my Application, Denied
« Reply #2 on: 03-22-18 at 01:05 pm »

This is a pretty tough question because it is believable that neither client nor attorney had any reason to think that "onesie" was a trademarked term, as opposed to a generic one.  (Based on the way I have seen the term used, it seems like a darn good candidate for court-ordered genericide given that the term has long been used to describe all articles of the type and that there is no short, plain term that is agreeably used by the public to describe the article.)

In view of the above, it would be hard to me to see that the attorney breached the standard of care by failing to look up every word in the application only to find that "onesie" happens to be a trademark.  (By the way, trademark owner Gerber does not capitalize the term in its own logo usage.)

Although no one may be at "fault" here, I can see arguments both ways as to who should be responsible for covering the cost of the additional work.  If you are a good client who otherwise timely pays bills and is likely to bring more work in the future, the attorney will probably not have too much issue in making this one a freebie, just this once.  If, however, the attorney feels he or she has already lost money doing work for you, he or she may be less amenable to letting this one go.

It doesn't hurt to ask the attorney for a discount this once, in view of the points you have set forth here on this board.  That doesn't mean you would be necessarily likely to prevail if you were to press the dispute further.  Pick your battles.
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This post is made in the context of professional discussion of general patent law issues and nothing contained herein may be construed as legal advice.

still_learnin

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Re: Attorney Used Trademarked Term in my Application, Denied
« Reply #3 on: 03-22-18 at 02:13 pm »

Hello, attorney used the term "onesie" in my application and that was the sole reason for denial.

Are you saying that the mark itself included the term "onesie"? Or did "onesie" appear in a description of the goods?
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The above is not legal advice, and my participation in discussions on this forum does not create an attorney-client relationship.
 



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