Not Just Patents ® Legal Services provides a very economical package for USPTO Trademark Registration and Trademark Oppositions and Cancellations. See What to Expect from a Not Just Patents ® Trademark Attorney for more information on what steps we take to protect your rights and help you develop a strong trademark.
We suggest our service and our plan-
To Verify a potential trademark is strong, available to use, and ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these steps:
5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing.
*We do not stop here but this is a good start.
If you have already received a refusal, we can provide services that include a quick and economical Response to Office Action (ROA). See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.
Should You File Your Own Application,
Answer Your Own Refusal, or Defend Your Own Trademark Opposition?
It looks easy but it isn’t. About 70% of trademark applications are refused at least once. Filing a USPTO trademark application is a legal proceeding that requires an applicant to satisfy many legal requirements within strict time deadlines. An applicant for a USPTO Trademark Registration must comply with all substantive and procedural requirements of the U.S. Trademark Act and U.S. Trademark Rules of Practice when applying to the USPTO for a trademark even if the entity is not represented by an attorney. The USPTO is represented by an experienced well-
Having a solid, enforceable trademark and trademark application and registration is a good investment. Most Not Just Patents’ clients are small businesses but we also do work for other attorneys.
Trademark Appeals, Trademark Oppositions and Trademark Cancellations require an understanding of trademark law and TTAB (Trademark Trial and Appeal Board) procedures. Pro se (no attorney) plaintiffs and defendants are allowed but are held to the same standards as an attorney.
Overcoming A Substantive Refusal
Not Just Patents ® Legal Services answers refusals for any of our application clients as part of the service at no extra charge. We also answer refusals for clients who have used other services and sometimes will even offer a discounted service if you used one of the form services who really messed up your application.
If an applicant is not represented by an attorney it is called pro se. A pro se applicant may be able to answer refusals themselves but keep in mind that your adversary, the USPTO trademark examiner, is a well-
If the examining attorney has refused your mark for any substantive legal reason, you are entitled to submit arguments in support of registration. If you are going to try and answer the refusal yourself, you should simply and completely address the points raised by the examining attorney in the Office Action. Applicants are not required to provide case law support but may if it is appropriate. If the examining attorney is convinced by your arguments, the examining attorney will withdraw the refusal(s). If not convinced, and assuming there are no other outstanding issues, the examining attorney will issue a final refusal.
Your options at that point are 1) appeal to the Trademark Trial and Appeal Board (TTAB), an administrative adjudication board and submit a request for reconsideration if appropriate; or 2) not respond, which will lead to abandonment of the application. You may still be entitled to use this mark as your "trademark" or "service mark; however, you would not have the rights associated with a federal registration. The same trademark issues that caused the refusal may also limit the rights associated with the mark under common law.
The following is an actual merely descriptive/generic refusal that was affirmed on appeal but is not a precedential case.
SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
Registration is refused because the applied-
In addition to being merely descriptive, the applied-
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services. TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-
The applicant applied to register the mark ITICKETS for arranging for ticket reservations for shows and other entertainment events; entertainment ticket agency services; on-
The letter “i” or “I” used as a prefix would be understood by the purchasing public to refer to the Internet when used in relation to Internet-
The applicant’s own website, attached as specimen, and the applicant’s identification of services indicates that the applicant provides ticket services via the Internet. The attached excerpt from www.folkd.com indicates that the applicant is not the only entity using the term ITICKETS to identify tickets that can be purchased on the Internet.
Accordingly, the mark is refused registration on the Principal Register under Section 2(e)(1) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
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