Forums: Discussions for entrepreneurs and small business.

Hello ALL,

I`m new to the group and have enjoyed it a lot. A whole lot!

I`m on the last phase of completing a trademark and yesterday I received a response from the trademark agency.  So I would have much gratitude for any contact where I can ask several questions to clarify what`s being requested of me.

Thanks everyone for taking the time to read this and offering your assistance!

Peace,

C.F. Jackson

 

 

 

C.F,

would you be able to pose the questions to the thread, so we all can see and learn what type of questions are asked.???

 

Thanks  Mike

Erik Pelton, registered as a member here on SuN, is someone a client of mine uses for trademark services on a regular basis.

- J.






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Jeff Fisher | Jeff Fisher LogoMotives | Tweet! Tweet!

C.F.,

I am a trademark attorney focusing on small and startup businesses.  I would be glad to answer any quetstions for you on the site here so others could see as well.  (Thanks for the plus Jeff!)  You can get some basic background information about trademark protection and my services at http://www.tm4smallbiz.com.

I look forward to your questions!

- Erik Pelton


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tm4smallbiz.com - trademarks for small businesses

Erik M. Pelton, Attorney at Law
Top 10 National Attorney Award Winner - 2005 NameProtect`s Trademark Insider®

ph: 703-525-8009
fax: 703-525

Hello ALL,

I`m going to run throug this because I typed it once and my computer didn`t something to erase it. It was nicely laid out, this time it`s a nutshell of a nutshell.

Response to my trademark submission

1. No Conflicting Marks Found (no similar registered or pending mark has been found that would bar registraction)

2. Ornamentation Refusal (is a decorative/ornamental feature of applicant`s goods & would not be perceived as a mark by the purchasing public.

The mark consist of the workds won`t be denied. Includes the yin yang symbol in sky blue.

Overcoming Ornamental Refusals

They are allowing me to respond with evidence:

1. Acquired Distinctiveness (submitting evidence)

2. Acquired Distinctiveness based on 5 yrs use

and many other ways.

I submitted this on my own through reading and research. At this junture it appears I just need to respond correctly and the process is positive done deal.

Erik your insight is greatly appreciated.

Peace,
C.F.

 

Dear C.F.,

Becuse this is a public forum, I cannot provide specific legal advice for you.  However, I can provide some general comments:

- You should have the opportunity to respond to the USPTO and submit arguments and/or evidence that the proposed trademark is not ornamental
- If you cannot overcome the `ornamental` finding and cannot demonstrate acquired distinctiveness, you should be able to amend the application to the Supplemental Register of trademark which provides some (including the use of the registered trademark symbol) but not all of the benefits that the main Principal Register provides.

I hope this is helpful.  Feel free to post additional questions or contact me.

- Erik Pelton


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tm4smallbiz.com - trademarks for small businesses

Erik M. Pelton, Attorney at Law
Top 10 National Attorney Award Winner - 2005 NameProtect`s Trademark Insider®

ph: 703-525-8009
fax: 703-525

To Erik,

I keep reading different descriptions about trade marks and the like, But can never figure out  Why it is important to do so,  if you`re using the mark someone else just cant  come along and use it can they??  or regisster it themselves  ??  can they?  doesn`t the use of the mark give you automatic rights???

Mike

Hey Erik,

Thanks! I`m in great need of clarity to maintain the status thrus far with the agency and to catapult over this ornamental refusal obsticle.

What you`ve stated, I understood from the pages of the long reply. I just need to understand what exactly they see as the error.

Thanks again Erik. I will find a way.

Peace,
C.F. Jackson

In general, ornamental means you are using the name on the front a shirt or some other place where it is not truly identifying a brand name.  Polo and Calvin Klein and others can get away with this because the trademarks are also on the tags and labels so they do identifiy a brand source.  If you want to strengthen a brand for clothing, place the trademark(s) on the tags and not just on the front or back of the clothing.  For example, at a concert you could buy a t-shirt with "U2" on the front but "U2" is not really a clothing brand... in that case it is promoting their muscial products and services.

Here is a link to the USPTO manual for trademark regulations:
Trademark Manual of Examining Procedure
You can find more information about "ornamental" and other trademark issues and procedures there.

- Erik Pelton


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tm4smallbiz.com - trademarks for small businesses

Erik M. Pelton, Attorney at Law
Top 10 National Attorney Award Winner - 2005 NameProtect`s Trademark Insider®

ph: 703-525-8009
fax: 703-525

Hey Erik,

Thanks for the follow up. I spoke with the trademark attorney who is handling my submission on yesterday and provided me with some great insight. He mirrored your above reply and also gave me direction as well. 

So I`ve submitted my response on yesterday evening. This a very interesting and learning experience.

Peace,
C.F. Jackson