Trademark application denied. - GoFuckYourself.com

mkx · 07-22-2005, 12:30 AM

Anyone here know the best way to deal with a denied trademark application? I rather not post the mark being applied for.

:::

SEARCH OF THE RECORDS

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). TMEP section 1105.01.

MERE DESCRIPTIVENESS

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the applicant?s services. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Brighthahaha8209;Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP section 1209.01(b).

The term merely describes a feature, characteristic or purpose of the applicant?s services. The mark immediately names the exact nature and purpose of the services. Accordingly, the mark is refused registration on the Principal Register under Section 2(e)(1).

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

REQUIREMENT FOR INFORMATION

The examining attorney requires information about the services to determine whether all or part of the mark is merely descriptive as applied to the services. TMEP section 814. The applicant must provide information for the services. This may take the form of a fact sheet, brochures, or advertising materials. If unavailable, the applicant should submit the information for services of the same type, explaining how its own services will differ. If the services feature new technology and no competing services are available, the applicant must provide a detailed factual description of the services.

In all cases, the submitted factual information must make clear what the services include, its salient features, and its prospective customer and/or channel of trade. This information is not readily available to the examining attorney, and is pertinent to the descriptiveness determination.

Trademark Rule 2.61(b) states "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application". The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule. In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration).

JFK · 07-22-2005, 12:37 AM

Interesting

mkx · 07-22-2005, 12:42 AM

Very, the term really fit the description of services as well. The site hasn't launched yet. If anyone has dealt with this issue before or can guide me through a response, that would be great.

XPays · 07-22-2005, 12:49 AM

without the word mark it's tough to assist you but you have options. you can file for the supplemental registry for example. you or your attorney need to press forward if you want your mark.

you'll be able to track your ip at http://IPalert.com very soon too which will keep you in the loop all the time on your ip and your interests as well.

mkx · 07-22-2005, 12:59 AM

Thanks Xpays, here is an example mark that I find appropriate to compare this to:

iCards, an only company selling business cards, applying for the trademark "iCards".

The application was done through legal zoom. If there are any attorney's or trademark experts here that would like to followup on the application for me please contact me by email or ICQ with the price.

Maureenoz · 07-22-2005, 02:00 AM

Our attorney is in Florida but he got all our trademarks for us and we had a similar problem.

1218657

Marie · 07-25-2005, 01:27 AM

Freeones is working with a specialized trademark attorney's office and it took us over 2 years to get everything done. That is, ALMOST done. It took a lot of money and time to get those trademarks, and we don't even have them all yet. We registered in various countries and for each country we needed to change classes or adjust descriptions. The EU and US "Freeones" seem to be done now, yay!

Anyway, make sure that you hire specialized trademark lawyers and keep on pushing them when necessary. Ours is in The Netherlands so it won't be very useful to you I'm afraid.

07-22-2005, 12:30 AM	#1
mkx Confirmed User Industry Role: Join Date: Nov 2003 Location: Toronto Posts: 4,001	Trademark application denied. Anyone here know the best way to deal with a denied trademark application? I rather not post the mark being applied for. ::: SEARCH OF THE RECORDS The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). TMEP section 1105.01. MERE DESCRIPTIVENESS The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the applicant?s services. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq. A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Brighthahaha8209;Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP section 1209.01(b). The term merely describes a feature, characteristic or purpose of the applicant?s services. The mark immediately names the exact nature and purpose of the services. Accordingly, the mark is refused registration on the Principal Register under Section 2(e)(1). Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. REQUIREMENT FOR INFORMATION The examining attorney requires information about the services to determine whether all or part of the mark is merely descriptive as applied to the services. TMEP section 814. The applicant must provide information for the services. This may take the form of a fact sheet, brochures, or advertising materials. If unavailable, the applicant should submit the information for services of the same type, explaining how its own services will differ. If the services feature new technology and no competing services are available, the applicant must provide a detailed factual description of the services. In all cases, the submitted factual information must make clear what the services include, its salient features, and its prospective customer and/or channel of trade. This information is not readily available to the examining attorney, and is pertinent to the descriptiveness determination. Trademark Rule 2.61(b) states "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application". The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule. In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration).

07-22-2005, 12:37 AM	#2
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07-22-2005, 12:49 AM	#4
XPays Team Player Join Date: May 2004 Location: Inside the most accurately counting and reporting affiliate system in the world at XPays.com Posts: 13,002	without the word mark it's tough to assist you but you have options. you can file for the supplemental registry for example. you or your attorney need to press forward if you want your mark. you'll be able to track your ip at http://IPalert.com very soon too which will keep you in the loop all the time on your ip and your interests as well. __________________ InterNext Expo Domain Auction Live Now thru Feb 5 HuntingMoon GFY Domains Marketplace is LIVE XPays always pays! Top Site: * RealJasmine.com * + HotelHeiress® with The Paris Hilton Sex Video Insert the HotelHeiress® HD FEED into your members areas XPin.com Opening for Pin Partners Soonish Mainstream Offers For Emailers and DomainersNONADULT.COM Like Us!

07-22-2005, 02:00 AM	#6
Maureenoz I'm older than you are. Industry Role: Join Date: Jul 2003 Location: very far south Posts: 165	Our attorney is in Florida but he got all our trademarks for us and we had a similar problem. 1218657 __________________ Love Ain't FREE! SexyAds.Com

07-25-2005, 01:27 AM	#7
Marie Confirmed User Industry Role: Join Date: May 2003 Location: Netherlands Posts: 3,024	Freeones is working with a specialized trademark attorney's office and it took us over 2 years to get everything done. That is, ALMOST done. It took a lot of money and time to get those trademarks, and we don't even have them all yet. We registered in various countries and for each country we needed to change classes or adjust descriptions. The EU and US "Freeones" seem to be done now, yay! Anyway, make sure that you hire specialized trademark lawyers and keep on pushing them when necessary. Ours is in The Netherlands so it won't be very useful to you I'm afraid. __________________ Maria - maria at photorama.nl - Photorama International CONTENT LOADS of content in various niches - many photo/video combinations! CONTENT

07-22-2005, 12:42 AM	#3
mkx Confirmed User Industry Role: Join Date: Nov 2003 Location: Toronto Posts: 4,001	Very, the term really fit the description of services as well. The site hasn't launched yet. If anyone has dealt with this issue before or can guide me through a response, that would be great.

07-22-2005, 12:59 AM	#5
mkx Confirmed User Industry Role: Join Date: Nov 2003 Location: Toronto Posts: 4,001	Thanks Xpays, here is an example mark that I find appropriate to compare this to: iCards, an only company selling business cards, applying for the trademark "iCards". The application was done through legal zoom. If there are any attorney's or trademark experts here that would like to followup on the application for me please contact me by email or ICQ with the price.