[E-trademarks] [EXT] Re: Letter of Protest: anonymous?
Pamela Chestek
pamela at chesteklegal.com
Thu Apr 11 11:55:45 EDT 2024
Thanks! Yes, a misnomer for sure - I'm not sure how "use" could be
"premature"!
Pam
Pamela S. Chestek
Chestek Legal
300 Fayetteville St.
Unit 2492
Raleigh, NC 27602
+1 919-800-8033
pamela at chesteklegal
www.chesteklegal.com
On 4/11/2024 10:43 AM, Kevin Grierson wrote:
>
> Beat me to it. The only reference to anything similar to “premature
> use” I can find in the TMEP is in 1109.02, which refers to a premature
> filing of a statement of use, which doesn’t seem applicable. So I
> took a look at one of the refusals for “premature use.” It appears
> that the gist is that an applicant has filed a 1(a) application when
> he/she/they/it has not yet actually used the mark in commerce (which
> seems to me to be “non-use” or “premature CLAIM of use” rather than
> “premature use”):
>
> _Premature Use – Final Refusal_
>
> The May 19, 2015 Office Action refused registration under Trademark
> Act Sections 1(a) and 45 because the current “specimens” and
> Applicant’s statements show that applicant has not used the
> applied-for mark in commerce in connection with the identified
> services as of the filing date of the application. Trademark Act
> Sections 1(a) and 45, 15 U.S.C. §§1051(a), 1127; see TMEP §§904,
> 1301.03(a).
>
> Use or display of a mark in the sale or advertising of goods and/or
> services before actually creating or providing the goods or rendering
> the services is not use in commerce. /See Aycock Eng’g, Inc. v.
> Airflite, Inc.,/ 560 F.3d 1350, 1360, 90 USPQ2d 1301, 1308 (Fed. Cir.
> 2009) (holding that applicant’s preparations to use a mark in
> commerce, by establishing a corporate entity to do business, obtaining
> toll-free telephone numbers and contracting with suppliers, were not
> sufficient to show use in commerce); /Richardson-Vicks, Inc. v.
> Franklin Mint Corp/., 216 USPQ 989, 991-92 (TTAB 1982) (noting that
> the goods to be identified by the mark must exist at the time of a
> sale); TMEP §§904, 1301.03(a).
>
> In this case, the applicant filed over 150 applications which have
> been refused for various reasons including likelihood of confusion,
> false connection, mere descriptiveness, and specimen of
> use. (/See/ previously supplied list of Applicant’s co-pending
> applications.) The applicant indicates in most of its responses that
>
> "A professional company should be 1a because it is available for sale
> right now. Any legal advertising cannot be done until the USPTO
> approves the trademark."
>
> (/See/, e.g., attached April 22, 2015 “Response to Office Action” from
> Applicant’s co-pending Application Serial No. 86/466965.)
>
> The applicant appears to be confused with what is required for a USE
> based application as opposed to an INTENT TO USE application since the
> above statement appears to show a misunderstanding of what is meant by
> "use in commerce".
>
> Trademark Act Section 45 defines "use in commerce" as follows:
>
> The term "use in commerce" means the _bona fide use of a mark in the
> ordinary course of trade_, and _not made merely to reserve a right in
> a mark_.
>
> TMEP §901.01.
>
> Based on Applicant’s statements, and on the supplied “specimen of use”
> (which is still nothing more than an image showing a rendering of the
> mark on a piece of paper), it does not appear that Applicant is using
> the applied-for mark in commerce within the meaning of Trademark Act
> Section 45, and Applicant failed to address this refusal in its most
> recent response.
>
> As a result of the foregoing, the refusal under Trademark Act Sections
> 1(a) and 45 is maintained and made FINAL.
>
> If applicant’s services were being rendered in commerce as of the
> filing date of the application, applicant must submit the following:
>
> (1) _A substitute specimen_ showing the applied-for mark in use in
> commerce for the goods and/or services specified in the application.
>
> (2) _The following statement_, verified with an affidavit or signed
> declaration under 37 C.F.R. §2.20: “*The substitute specimen was in
> use in commerce at least as early as the filing date of the
> application*.” 37 C.F.R. §2.59(a); TMEP §904.05; /see/ 37 C.F.R.
> §2.193(e)(1). If submitting a substitute specimen requires an
> amendment to the dates of use, applicant must also verify the amended
> dates. 37 C.F.R. §2.71(c); TMEP §904.05.
>
> If applicant did not use the applied-for mark in commerce on or before
> the filing date, applicant may substitute a different basis for filing
> if applicant can meet the requirements for the new basis. In this
> case, applicant may wish to amend the application to assert a Section
> 1(b) basis. /See/ TMEP §806.03(c). However, if applicant amends the
> basis to Section 1(b), registration will not be granted until
> applicant later amends the application back to use in commerce by
> filing an acceptable allegation of use with a proper specimen.
> /See/ 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. If
> the same specimen is submitted with an allegation of use, the same
> refusal will issue.
>
> To amend to Section 1(b), applicant must submit the following
> statement, verified with an affidavit or signed declaration under 37
> C.F.R. §2.20: “*Applicant has had a bona fide intention to use the
> mark in commerce on or in connection with the goods or services listed
> in the application as of the filing date of the application*.” 37
> C.F.R. §2.34(a)(2); TMEP §806.01(b); /see/ 15 U.S.C. §1051(b); 37
> C.F.R. §§2.35(b)(1), 2.193(e)(1).
>
> *Kevin Grierson***********
>
> *CULHANEPLLC <http://www.culhanemeadows.com/>*
>
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> Email:
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> kgrierson at cm.law <mailto:kgrierson at cm.law>
>
>
> *From:*E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On
> Behalf Of *Pamela Chestek via E-trademarks
> *Sent:* Thursday, April 11, 2024 9:44 AM
> *To:* e-trademarks at oppedahl-lists.com
> *Cc:* Pamela Chestek <pamela at chesteklegal.com>
> *Subject:* Re: [E-trademarks] [EXT] Re: Letter of Protest: anonymous?
>
> EXTERNAL EMAIL
>
> "Premature Use"? Never heard of that one!
>
> Pam
>
> Pamela S. Chestek
> Chestek Legal
> 300 Fayetteville St.
> Unit 2492
> Raleigh, NC 27602
> +1 919-800-8033
> pamela at chesteklegal.com
> www.chesteklegal.com <http://www.chesteklegal.com/>
>
>
> On 4/10/2024 9:41 PM, Laura Geyer via E-trademarks wrote:
>
> Alex:
>
> I’ve had a number of LOPs accepted over the years, and I always
> tell clients that:
>
> 1. It’s absolutely confidential as an initial matter, and if not
> granted, it’s pretty safe to assume nobody but G-d and an
> unidentified person on the PTO staff will know about it, BUT
> 2. If granted, and especially if the applicant is aware of your
> existence, there’s a chance that they’ll /guess/ who is
> responsible especially if your mark is the only one cited. If
> it’s one of those 13 mark 2(d)s 🙄🙄🙄 you might squeak past,
> but if it’s the corporate equivalent of a national security
> concern then:
> 3. Just assume that it could be found out by FOIA or accidentally
> entered into the record somehow in the process and make your
> dispositions accordingly.
>
> It’s just such a useful tool that it’s worth the risk. I’m not
> aware of one of mine that leaked but certainly it wouldn’t take a
> master carpenter to sort out who’d filed it in some of those
> cases. I do remember back when the “Trademark King” filed to
> register something like 80 trademark applications a number of
> which incorporated famous trademarks (like, say, Mercedes) or
> famous people’s names like Elton John or a bunch of generic things
> like “Holiday Sale” (resulting in office action responses I
> treasure to this day) all for “trademark branding”. There was a
> rain of LOPs in lots of the famous mark applications, many of
> which were passed on to the examiners and 2(d)s issued (that
> probably would have issued anyway). I mean, it could have been a
> random Concerned Citizen, but the smart money would have been on
> the brand owners… 😉
>
> “Who was the Trademark King,” those of you who are not old like me
> might ask … just a few screenshots from one of his efforts.
>
> The summary of issues that repeated for multiple office actions:
>
> The King appealed to the Commissioner – Sir Elton had slept upon
> his rights! He was lazy!
>
> When the Examiner remained obdurate, the Trademark King appealed
> to a higher authority:
>
> Alas, it all ended in abandonment.
>
> Have a great evening!
>
> Laura Talley Geyer (she/her)
>
> Of Counsel
>
> /ND Galli Law LLC/
>
> 1200 G Street, N.W., Ste 800
>
> Washington, DC
>
> Tel: (202) 599-9019 (direct)
>
> https://ndgallilaw.com/laura-geyer/
>
> *From:*E-trademarks <e-trademarks-bounces at oppedahl-lists.com>
> <mailto:e-trademarks-bounces at oppedahl-lists.com> *On Behalf Of
> *Alex Butterman via E-trademarks
> *Sent:* Wednesday, April 10, 2024 3:54 PM
> *To:* For trademark practitioners. This is not for laypersons to
> seek legal advice. <e-trademarks at oppedahl-lists.com>
> <mailto:e-trademarks at oppedahl-lists.com>
> *Cc:* Alex Butterman <abutterman at dbllawyers.com>
> <mailto:abutterman at dbllawyers.com>
> *Subject:* Re: [E-trademarks] [EXT] Re: Letter of Protest: anonymous?
>
> *EXTERNAL EMAIL*
>
> That’s a good question. I have a fed government agency client that
> figured their Letters of Protest could be discovered by a FOIA
> request.
>
> *Alex Butterman*
>
> Partner**
>
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> *From:*E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On
> Behalf Of *Crane, Susan via E-trademarks
> *Sent:* Wednesday, April 10, 2024 08:06 AM
> *To:* For trademark practitioners. This is not for laypersons to
> seek legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Crane, Susan <susan.crane at wyndham.com>
> *Subject:* [EXT] Re: [E-trademarks] Letter of Protest: anonymous?
>
> True, but is it possible you can file a FOIA request to get the
> original letter?
>
> 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
>
> On Apr 10, 2024, at 8:04 AM, Michael Brown via E-trademarks
> <e-trademarks at oppedahl-lists.com> wrote:
>
>
>
> The Letter of Protest does not get sent to the applicant, nor
> is it part of the TSDR record. However, if approved, a
> memorandum from the Office of the Deputy Commissioner to the
> Examining Attorney with the relevant information for
> consideration
>
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> The Letter of Protest does not get sent to the applicant, nor
> is it part of the TSDR record. However, if approved, a
> memorandum from the Office of the Deputy Commissioner to the
> Examining Attorney with the relevant information for
> consideration is part of the TSDR record, so if there is
> information that would identify the Protestor, that might give
> it away.
>
> If you are interested, contact me off list, and I can point
> you to a case or two where I had LoPs accepted.
>
> Best regards,
> Michael
>
>
> Michael Brown
> Michael J Brown Law Office
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> On Wed, Apr 10, 2024 at 3:05 AM Judith S via E-trademarks
> <e-trademarks at oppedahl-lists.com> wrote:
>
> Hi All,
>
> I have a small client who is contemplating filing a Letter
> of Protest against a larger competitor who filed a
> trademark for a term they consider generic or descriptive
> of the technology they use.
>
> They are concerned that if they are identified as the
> "Protestor" there might be retaliation.
>
> The "Name of Protestor" field instruction says "Enter the
> full legal name of the entity objecting to the
> registration of a mark in a pending application, i.e., the
> name of the individual, corporation, partnership, or other
> entity that is protesting registration of a mark, NOT the
> person or firm completing the Letter of Protest."
>
> Could we use the name of the in-house attorney who is
> initiating the objection or some other name?
>
> Thanks for any insight.
>
> Judith
>
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