[E-trademarks] seeking billing software suggestions

[Crane, Susan]

I had a similar not matching rejection recently where the specimen showed the headline “Introducing MARK”.   The examiner argued “introducing” was part of the mark as shown in the specimen.

I didn’t bother to argue the point as I needed to submit a substitute specimen for other reasons. But it was absurd. As is yours. Not sure if we are getting new examiners who are being hyper picky about specimens. But may be worth a call to the supervising attorney if you don’t have “clean” specimens.

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 Nov 30, 2024, at 5:17 PM, Vic Indiano via E-trademarks <e-trademarks at oppedahl-lists.com> wrote:


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,
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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:

[1733004276092blob.jpg]
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

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