[E-trademarks] [EXT] Another new refusal

[Alex Butterman]

In my experience, the simplest way I know to attempt to fix a weird, longstanding screw-up short of a re-filing is through a Petition to the Director and then being at their mercy to find a solution. That probably isn't simple and it may not be a solution, but it passes the buck.

Alex Butterman
Partner
DUNLAP BENNETT & LUDWIG
211 Church St., SE; Leesburg, VA 20175
T: 703-777-7319 - BIO<https://www.dbllawyers.com/attorney/alex-butterman/>
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Crane, Susan via E-trademarks
Sent: Saturday, November 25, 2023 05:23 PM
To: e-trademarks at oppedahl-lists.com
Cc: Crane, Susan <susan.crane at wyndham.com>
Subject: [EXT] [E-trademarks] Another new refusal

So this is a first -

It appears the PTO somehow screwed up and when a mark we acquired issued to registration, the PTO misclassified it as a collective service mark, instead of a service mark.  I went through the prosecution history and at no point did applicant request a collective mark because it wasn't one, and in the publication it identified the mark properly as a service mark.  Prior counsel obviously did not notice the word "collective" on the reg. certificate.  So now they are rejecting the Sec. 8&15 because the specimen does not show use as a collective mark.  To make matters more complicated, this mark was applied for in 2005 but did not issue to registration until 2017 due to a longstanding dispute and numerous suspensions.  Hoping there is a simple way to correct this but I am guessing it will become complicated.

Sue

Susan L. Crane
Group Vice President, Legal
Intellectual Property, Brands & Marketing

Wyndham Hotels & Resorts, Inc.
22 Sylvan Way
Parsippany, NJ 07054
O (973) 753-6455
M (973) 879-3420
Susan.Crane at wyndham.com<mailto:Susan.Crane at wyndham.com>



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