[E-trademarks] seeking billing software suggestions

[Paul Supnik]

Vic,

I am at least 99% sure that you are correct and the Examining Attorney is wrong.  If this were a mutilation of the mark sought to be registered, that is one thing, but you have tried to register a word mark and the descriptive material beneath the mark in the specimen is a description of the goods, not the mark itself anyway.  In fact, this is very proper use of the mark, using it as an adjective and following it by the common descriptive term of the goods or services sold under the mark.  I would simple respond with something pointing out these issues and I would think you can get the Examining Attorney to change her mind.

Regards,

Paul D. Supnik

[Paul D. Supnik9454 Wilshire Blvd, Ste 550Beverly Hills, CA 90212]<https://supnik.com/>

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Vic Indiano via E-trademarks
Sent: Saturday, November 30, 2024 2:14 PM
To: e-trademarks at oppedahl-lists.com
Cc: Vic Indiano <gadgetlawyer at yahoo.com>
Subject: Re: [E-trademarks] seeking billing software suggestions

Re; Specimens.

I recently received rejection of specimens that I submitted that I struck me as odd, since I have never received a rejection of specimens on this basis before, although I have submitted many similar specimens.

Hypothetically, the trademark is for the term Fast Flush in the standard character format

The specimen that I submitted showed the mark in a logo form and appeared as follows:

[Inline image]
The reason for the rejection was that it did not show the mark Fast Flush that was sought to be registered. Rather, the examiner believed that the mark that was shown was

Fast Flush Plumbing and HVAC

This struck me as strange, as I have never had a specimen rejected that showed of the mark adjacent to a generic descriptor.

Is the trademark examiner's rejection legitimate? Or is in fact the specimen not a proper showing of the mark?

When I followed up with the examiner by presenting other specimens for her to review, she made another interesting comment.

Some of the new specimens show the term Fast Flush, whereas others showed the term Faster Flush.

I can understand that the use of the term Faster Flush in the specimens does not show use of the term. However, her comment was that the specimens as a group were not good because the mark was used inconsistently in different specimens.

To my knowledge, there is no requirement that a trademark be used  in a consistent manner, so long as it is being used in the manner for which an application is sought somewhere.

Again, do you believe the examiner to be correct in her assertion, or a she off base.

Any thoughts and help are most welcome.

Vic Indiano


The Indiano Law Group, LLC



E. Victor Indiano

9795 Crosspoint Blvd. Suite 185

Indianapolis, IN 46256

Direct Phone:317-927-8465

E-Mail Vic at IM-iplaw.com<mailto:Vic at IM-iplaw.com>

www.indyiplaw.com<http://www.indyiplaw.com/>

www.im-iplaw.com<http://www.im-iplaw.com/>

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