[E-trademarks] Re-filed a previously approved ITU application, now refused?

Wed May 22 16:02:58 EDT 2024

Stated differently – The only thing consistent about the TMO is its inconsistency!

Simor Moskowitz
.........................................................

Simor L. Moskowitz

Westerman, Hattori, LLP

8500 Leesburg Pike, Suite 7500

Tysons, VA 22182

(240) 731-0609 (cell)

703) 827-3803 (DD)
(703) 827-3800 (main)
(571) 395-8753 (fax)
smoskowitz at whda.com<mailto:smoskowitz at whda.com>

(Member DC and MD Bars)

________________________________
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Heather Vargas via E-trademarks <e-trademarks at oppedahl-lists.com>
Sent: Wednesday, May 22, 2024 3:47 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Heather Vargas <Heather.Vargas at cobbcole.com>; Gordon Firemark <gordon.firemark at gmail.com>
Subject: Re: [E-trademarks] Re-filed a previously approved ITU application, now refused?

The PTO runs on the motto that “foolish consistency is the hobgoblin of little minds.”  I am afraid you are out of luck.  And if you make this work, please tell the rest of us how you did it!

[Picture1.png]  Heather Vargas (She/Her/Hers)
Florida Bar No. 230900
Board Certified in Intellectual Property Law
Cobb Cole
One Daytona Boulevard, Suite 600
Daytona Beach, FL 32114
(D) 386-323-9220 | (F) 386-323-9206
Website<https://cobbcole.com/> | Bio<https://cobbcole.com/attorney/heather-bond-vargas/>

Cobb Cole’s Daytona Office has relocated. We look forward to hosting you in our new location.
New Address: One Daytona Boulevard, Suite 600, Daytona Beach, FL 32114
(Across from the Daytona International Speedway)

Notice: The information contained in this email transmission is intended by the sender for the use of the named individual or entity to which it is directed and may contain information that is privileged or otherwise confidential. It is not intended for transmission to, or receipt by, anyone other than the named addressee (or a person authorized to deliver it to the named addressee). It should not be copied or forwarded to any unauthorized persons. If you have received this electronic mail transmission in error, please delete it from your system without copying or forwarding it, and notify the sender of the error by reply email or by calling Cobb Cole at 386-255-8171, so that we can update our address records accordingly.

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Gordon Firemark via E-trademarks
Sent: Wednesday, May 22, 2024 3:36 PM
To: e-trademarks at oppedahl-lists.com
Cc: Gordon Firemark <gordon.firemark at gmail.com>
Subject: [E-trademarks] Re-filed a previously approved ITU application, now refused?

Hi all,  I’m constructing arguments and can use some input (and case citations if you know ‘em)

Applicant, through a previous attorney y filed  an ITU application, and received a notice of allowance.  Somehow Statement of Use and Specimens weren’t filed, so the app was abandoned.

Client hired me to re-file the exact same application, this time on 1(a) basis, and the examining attorney has refused it and is requiring a disclaimer (which was NOT required in the now-abandoned version of the same mark) of one word in this 3-word mark.

Client prefers NOT to disclaim, and has asked me to respond accordingly.

Is there any merit to the argument that the applicant should be able to rely on the prior approval without the disclaimer requirement?

It seems to me that administrative agencies should apply rules and laws consistently across identical scenarios… particularly when presented by the exact same applicant?  Isn’t this a due-process  thing?   (I can’t find much to support my thinking specifically with respect to the USPTO)

Thanks in advance for any insights

____________________________________

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
[cid:image001.png at 01DAAC5F.48990770]
____________________________________

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240522/0209e8cc/attachment.htm>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 9779 bytes
Desc: image001.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240522/0209e8cc/attachment.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: cobbcolelogomodrgb_4d64a9e3-83d6-4a74-9443-b78133d2646e.png
Type: image/png
Size: 13405 bytes
Desc: cobbcolelogomodrgb_4d64a9e3-83d6-4a74-9443-b78133d2646e.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20240522/0209e8cc/attachment-0001.png>