[E-trademarks] Examiner using applicant company's owner's uses of the mark as evidence of descriptiveness.

[Gordon Firemark]

This is one I haven’t encountered before.

Applicant is a corporation that is applying to register a term/slogan it regularly uses to identify it’s particular system for accomplishing a goal.

Applicant’s sole owne/CEOr (the public “face” of the company) makes frequent podcast appearances and public speaking appearances to promote this system, and the episodes or presentations are often titled using the mark in question. There are often blog posts and other web-based reports and advertisements of these talks… often under the term as a headline.  This owner’s name and photo are often included.

EA has cited several of these blog posts and podcast episodes as evidence that the mark is widely used to identify this category of service, and is thus primarily merely descriptive.  

Obviously, I will present evidence that this person is the owner/ceo of the applicant company, but is anyone aware of any authority I can use to successfully argue against this, and that this particular combination of words IS distinctive, given that client is really the only user of the mark this way?



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Gordon Firemark
Attorney at Law
Firemark Entertainment Law | The Podcast Lawyer™
10940 Wilshire Blvd. Fl. 16 | Los Angeles, CA 90024
 www.firemark.com <http://www.firemark.com/> | gfiremark at firemark.com <mailto:gfiremark at firemark.com> | (310)421-9970
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